Posted: December 4th, 2017
Resolution Chemicals Limited v. AstraZeneca B.V. and Shionogi Seiyaka Kabushiki Kasiha, Opinion PG delivered by AG G.R.B. Van Peursem, Dutch Supreme Court, 24 November 2017, Case no. 16/02891, with thanks to Willem Hoyng, HOYNG ROKH MONEGIER, for providing the translation
“In this patent case dealing with the extent of the protection that is conferred by EP 471 (for a new cholesterol inhibitor), the question to be answered is whether a limiting definition (“own lexicon”) in the description of the claim feature “pharmaceutically acceptable salt” is involved. In contrast to the District Court, following an extensive substantiation, the Court of Appeal ruled that the average skilled person would not take the definition given in paragraph 7 of the description to be a limiting definition.
“I feel that the complaints in cassation directed against this, in summary entailing that this interpretation is incomprehensible and in breach of Article 69 EPC, do not hold. I also feel that the complaints directed against the Court of Appeal’s interpretation of the grounds for appeal and the finding that no added subject matter is involved are unsuccessful. Thus, I conclude that the appeal in cassation is dismissed.
“The Supreme Court could use this case to clarify whether the waiver doctrine from Van Bentum/Kool is still valid law. This is a difficult disputed point in the patent practice (and in the case at issue, as well), which would benefit from clarity regarding this point.
“I believe that the waiver doctrine stems from the era of the abandoned protective scope doctrine of the essence and does not fit (or no longer fits) within the correct application of Article 69 EPC according to the Protocol on the interpretation of this article, as this has also been almost fully worked out in the Netherlands. Because according to prevailing Dutch patent law, the inventive idea is no longer the starting point in determining the protective scope, but is a point of view that may play a role in this, I believe that in practical terms, it is possible to arrive at a system that comes close to the waiver doctrine: in my opinion, in the scope of the point of view of the inventive idea, in conformance with Article 69 EPC, it is possible to include this when considering whether according to the average skilled person, the intention was to limit the extent of the protection. On balance, this is the method that the Court of Appeal used in the ruling that is challenged in the case at issue. This differs slightly (not radically) from the waiver doctrine as we know it, but in practice, this will rather frequently produce similar results in terms of outcome.”