EPLAW Patent Blog

NL - Pharmachemie B.V. / Glaxo Group Limited

Pharmachemie B.V. vs. Glaxo Group Limited, Supreme Court, the Netherlands, 22 June 2012, Case No. 11/01662, with thanks to Daan de Lange and Ruprecht Hermans, Brinkhof, for sending in the decision and the English translation

Glaxo’s EP 0 226 266 (“EP ‘266”) expired on 24 June 2006. Pharmachemie had a generic version of ondansetron (which is covered by EP ‘266) included in the June 2006 edition of the “G-Standaard”. [The G-Standaard is a database comprising ordering information on products that are available with wholesalers and pharmacists].

The Supreme Court holds that including a generic medicine in the “G-Standaard” influences market behaviour and must at all times be considered as “offering” within the meaning of Article 53(1) of the Patents Act 1995. Pharmachemie had therefore infringed EP ‘266. The Supreme Court rejected Pharmachemie’s defence that considering that including a generic medicine in the G-standard of the month of patent expiry is an infringing act would amount to a de facto extension of the term of protection of a patent. Accordingly, in the Netherlands, a generic medicine may only be included in the “G-standaard” after expiration of a patent.

Read the decision (in Dutch) here.

Read the decision (in English) here.

Head note: András Kupecz

DE - Pralinenform II

Pralinenform II, infringement proceedings, German Federal Supreme Court, 22 April 2010, Docket No. I ZR 17/05

The German Federal Supreme Court decided in a trademark case that the mere presentation of products at a German trade fair is not automatically regarded as an offer of these products or as a putting of these products on the market. It is open whether this decision may be applied in patent infringement cases.

Read the decision (in German) here.

Head note: Tilman Müller-Stoy

DE - Mannheim Regional Court decision I

Mannheim Regional Court, decision of 29/10/2010, docket no.: 7 O 214/10

- An interim injunction can only be granted in patent disputes if the question of infringement can be readily judged without doubt and if there are no serious doubts as to the patentability of the patent in suit. Even if these requirements are satisfied the respective interests of the parties must be appraised and weighed up against each other.

- The fact that a product which makes use of all features of at least one claim of the patent in suit is exhibited at a trade fair and that product catalogues containing order numbers for such product are also on display at the trade fair stand does not per se constitutes an offer pursuant to § 9 no. 1 Patent Act.

Read the decision (in German) here.

Headnote: Jan Dombrowski

NL - The Hague Court of Appeal defines 'offer' prior to patent expiry

GlaxoSmithKline v. Pharmachemie, Court of Appeal The Hague, The Netherlands, 2 November 2010, Case No. 105.007.171/01, with thanks to Ruprecht Hermans and Daan De Lange, Brinkhof, for sending in the case and a summary/comment in English

"The Court of Appeal in The Hague rendered a fundamental decision today, November 2, 2010, in a case between GlaxoSmithKline and Pharmachemie (a member of the Teva group). The Court of Appeal held that publication of a generic pharmaceutical in the Dutch “G-standaard” (a database for pharmaceuticals) prior to patent expiry amounts to an “offer” under the Dutch Patent Act notwithstanding the fact that it was the intention to market the pharmaceutical only after patent expiry.

"The decision refers to the meaning of “offer” as contained in the Community Patent Convention (which never entered into force) considering that the term should be interpreted the same in the Netherlands because the parties negotiating the Convention agreed to implement the Convention articles in their national laws."

Read the entire summary in English here.

Read the decision (in Dutch) here. Read the English translation here (with thanks to Brinkhof).