Eurogenerics v. H. Lundbeck A/S and Lundbeck, Belgian Supreme Court, Brussels, Belgium, 24 June 2013, Case No. C12.0450.F/1, with thanks to Steven Cattoor, Hoyng Monegier, for providing the decision and a head note
Belgian Supreme Court confirms legality of PI pending appeal against annulment of SPC
As reported earlier on the EPLAW Patent Blog (see here), Lundbeck was able to obtain a preliminary injunction under its escitalopram SPC despite the fact that an earlier 1st instance decision on the merits had declared that SPC invalid (as reported here). The main reasoning of the Brussels Court of Appeal awarding the PI was that, given the suspensive effect of the pending appeal against the nullity decision (see here), this 1st instance decision did not stand in the way of finding the SPC prima facie valid and eligible for provisional protection pending the outcome of the appeal on the merits (which appeal was eventually decided in favour of Lundbeck – see here).
Eurogenerics filed a petition for review before the Supreme Court, essentially arguing that the PI judge was bound by the res judicata effect of the earlier decision on the merits and could not have legally decided that the invoked SPC was prima facie valid.
By decision of 24 June 2013, the Supreme Court dismissed the claims of Eurogenerics and upheld the reasoning of the Court of Appeal. In particular, the Supreme Court found that the PI judge, when determining the apparent rights of the claimant, can still take into consideration the claimant’s patent (or SPC) even if it was revoked in 1st instance, for as long as no final decision is rendered on appeal against the nullity decision.
Accordingly, although certain authors and practitioners have tried to argue otherwise, the Supreme Court teaching in the Novartis v. Mylan case (see here) regarding preliminary measures and the suspensive effect of an appeal against a revocation decision of the EPO Opposition Division, equally applies in cases where an appeal is pending against a 1st instance nullity decision given by a court of law rather than by “an administrative body” such as the EPO.
Read the decision (in French) here.