EPLAW Patent Blog

FR - Daiichi Sankyo Company Limited v. INPI / SPC

Daiichi Sankyo Company Limited v. INPI, Validity French SPC, Cour d'Appel of Paris, France, 6 November 2009, Case No. 09/06530 (with English translation), with thanks to Pierre Véron, Véron & Associés

The Cour d'Appel of Paris dismissed the appeal of Daiichi Sankyo lodged against the decision of the French Patent Office (Institut National de la Propriété Industrielle - INPI) to reject its French SPC. "Considering that, [...] the certificate cannot exceed the scope of the protection conferred by the basic patent; Considering that it is not disputed that only olmesartan medoxomil is comprised in the family of 1-biphenyllimidazole-type derivatives because hydrochlorothiazide has a molecular structure which excludes it therefrom. The combination of olmesartan medoxomil and hydrochlorothiazide is not protected by the basic patent because it is not claimed therein.

"Considering that the appellant’s developments on the foreign decisions about the granting of supplementary protection certificates are inoperative as they relate to distinct disputes; likewise, it is pointless to maintain that the combination at issue reproduces the characteristics of claim 5 since the question which is asked is whether this combination is protected by the patent and not whether it infringes it."

Read the decision (in French) here.
Read the decision (in English) here.

UK - Generics v Daiichi / Appeal

Generics (UK) v Daiichi, Court of Appeal, London, UK, 2 July 2009, Case No. [2009] EWCA Civ 646, with thanks to Marc Döring, Simmons & Simmons

In this case, the Court of Appeal has upheld the decision of Kitchin J that, although a course of action was obvious, the skilled person's motivation to pursue it to the point of making the invention was weak; and that accordingly the invention (an enantiomer of an antibiotic) was not obvious.

Read the extended summary (provided by Rowan Freeland and Scott Parker) here.

Read the appeal decision here.

Read the first instance decision here.

UK - Generics (UK) Ltd v. Daiichi Pharmaceutical

Generics (UK) Ltd v. Daiichi Pharmaceutical Co. Ltd and Daiichi Sankyo Co. Ltd, High Court of Justice, Chancery Division, Patents Court, 15 October 2008, with thanks to Marc Döring, Simmons & Simmons

The English Patents Court's decisions in Dr Reddy's v Eli Lilly (Floyd J - 13 October 2008) and Generics (UK) v Daiichi (Kitchin J - 15 October 2008) are further welcome news for patentees. In both instances the patent (for a compound within the scope of a "Markush formula" of an earlier patent application in the first case and for an enantiomer in the second case) was upheld.

Read the extended summary here.

Read the judgment (in English) here.