EPLAW Patent Blog

FR - Sandoz v. Eli Lilly

SAS Sandoz v. Eli Lilly and Company, Court of Appeal of Paris, France, 13 January 2012, Case No. 10/17727, with thanks to Dominique Menard and Stanislas Roux-Vaillard, Hogan Lovells, for providing the judgment and an extended summary in English

On 13 January 2012, the Court of appeal of Paris confirmed the judgment which found that the French part of Eli Lilly's patent No. EP 0 577 303 regarding a process for stereoselective glycosylation shows inventive activity, is sufficiently disclosed and consequently valid. The failing generics company is ordered to pay half a million Euros in attorney's fees.

Read the entire summary (in English) here.

Read the judgment (in French) here.

NL - Sufficiency of disclosure finally on the Dutch radar

Sufficiency of disclosure finally on the Dutch radar: District Court The Hague 19 May 2010,  Case  No. 348157/HA ZA 093220 (Novozymes v. DSM), by Wim Maas and Charlotte de Boer, Banning

 

 

Introduction
In a recent case between Novozymes and DSM the District Court of the Hague passed a very interesting and well-motivated decision on the ground of insufficient disclosure (Article 83 EPC). We hope that this judgment heralds the march of the insufficient disclosure ground under Article 83 EPC, since it is in our view the most important pillar for keeping the patent system in balance. Modern thinking on the rationale for a patent system sees a patent as a contract between the inventor and society at large. This was well expressed in a report to the French Chamber of Deputies in the debates preceding adoption of the French Patent Law of 1844:

Read the entire contribution (in English) here.

NL - Novozymes v. DSM Food Specialties

Novozymes v. DSM Food Specialties, District Court The Hague, The Netherlands, 19 May 2010,  Case  No. 348157/HA ZA 093220, with thanks to Simon Dack, De Brauw Blackstone Westbroek

Novozymes holds a European patent concerning a method preparing dough comprising, amongst other things, adding a lipolytic enzyme having activity towards digalactosyl diglyceride and the phospolipid (EP 1 131 416). Adding this lypolytic enzyme is said to help produce emulsifiers in the dough which would enhance its quality. DSM introduced its Panamore product, a direct competitor of Novozymes’ Lipopan products, in 2008. Novozymes is of the opinion that DSM’s Panamore product infringes on Novozymes European patent. DSM’s defends itself by invoking added matter, insufficient disclosure, lack of novelty and lack of inventive step. The District court holds the Dutch part of Novozymes’ patent invalid due to insufficient disclosure (Article 83 EPC). DSM’s other defenses are therefore not discussed by the District Court.

Article 83 EPC prescribes that a European patent must disclose the invention in a manner sufficiently clear and complete for it to be carried out by an average person skilled in the art. In other words, the disclosure of the invention must be reproducible without undue burden. The District Court finds that these requirement have not been met by Novozymes and refers to the claims of the patent as free-beer claims, meaning that by these claims Novozymes tries to protect something that everyone would want (free beer for instance), without clearly disclosing how the average skilled person could reach such desirable results.

Read the decision (in Dutch) here.

EPO - Convention on Biological Diversity and the exception to patentability for inventions which are contrary to “ordre public” or morality

EPO, Opposition Division, decision dated 20 April 2010, revoking European patent 1 429 795 (open to appeal)

European patent 1 429 795 is directed to a method for producing an extract from Pelargonium sidoides and/or Pelargonium reniforme, characterized by  subjecting the roots of the plants to certain steps in order to obtain the extract. The description mentions that Pelargonium sidoides has been traditionally used in Southern Africa as a medicament for a long time. 

The patent was opposed by several opponents on the grounds of lack of novelty, lack of inventive step and lack of sufficiency of disclosure. In addition, opponents African Centre for Biosafety and Erklärung von Bern relied on the grounds that the invention was contrary to “ordre public” and morality within the meaning of Art. 53 (a) EPC. They submitted that pelargonium roots in sufficient quantities as well as the traditional knowledge of indigenous communities had been available in South Africa and that the invention was based in essence on this fortunate circumstance. Under the Convention on Biological Diversity (CBD), the proprietor was obliged to respect, when making and when exploiting the invention, to comply with the criteria of “previous informed consent” and “benefit sharing” as stipulated in Art. 8(j), 15 and 16 CBD. The proprietor had not shown that he had acted in conformity with these requirements.

EPO - T0018/09 - Cooperation between Board of Appeal and National Court / acceleration of appeal proceedings

Human Genome Sciences (patentee) v. Eli Lilly (opponent), Cooperation between Board of Appeal and National Court / Acceleration of appeal proceedings, EPO Board of Appeal, 21 October 2009, Case No. T0018/09

In this case, the UK Court of Appeals requested the Board of Appeal to accelerate the parallel EPO appeal proceedings in order to have that appeal decided prior to the UK appeal hearing (which was then scheduled for December 2009, see Eli Lilly and Company v. Human Genome Sciences, Inc. [2008] EWCA Civ 168).

The Board acknowledged the practical and economic benefit of the national court's request and stated that it agrees entirely with the national appeal court that parties to such parallel proceedings should inform both tribunals of the position as early as possible and ask the appropriate tribunal for acceleration in order to avoid duplication of proceedings. Whether acceleration is requested by one party, or both or all parties in agreement, or by a national court, all parties must accept a strict procedural framework including short time limits. It must also be understood that acceleration can have no effect on the equal treatment of all parties and cannot confer any advantage on any one party.