H. Lundbeck A/S v. Alfred E. Tiefenbacher GmbH and Centrafarm B.V. Dutch Supreme Court, The Hague, The Netherlands, 7 June 2013, Case No. 12/00888, with thanks to Willem Hoyng and Jeroen den Hartog, Hoyng Monegier, for sending in the judgment and a translation in English
In an earlier decision, the Appeal Court of The Hague invalidated Lundbeck’s product claims covering “escitalopram” on the basis of a lack of inventive step. The Court of Appeal held that it was obvious on the priority date that one of the enantiomers of citalopram would have an increased activity vis-à-vis the racemate. Lundbeck’s claim that it was impossible on the priority date to obtain the enantiomers of citalopram was held to be irrelevant. The Supreme Court disagreed: the decision of the Appeal Court was held to be wrong in law.
According to the Supreme Court: “A substance of which the composition and possible features are in themselves known and that for that reason follows from the state of the art in an obvious manner as intended by article 56 of the European Patent Convention (EPC) and article 6 of the Dutch Patents Act 1995, can nonetheless not be obvious in the sense of these provisions and is therefore patentable if on the priority date the state of the art does not include a method for obtaining this substance and with the claimed method this substance can therefore be obtained for the first time in an inventive manner. After all, in that case also the substance, although in itself known in terms of composition and possible features, does not follow from the state of the art in an obvious manner. That is why also in that case a substance patent can be obtained.”
The case was referred back to the Court of Appeal for further handling.
Read the decision (in Dutch) here.
Read the decision (in Enlish) here.
Head note: Geert Theuws