NL – Ono v. Pfizer

Posted: March 1st, 2018

Ono Pharmaceutical Co. Limited v. Pfizer Inc., Interlocutory Judge District Court The Hague, 27 February 2018, Case no. ECLI:NL:RBDHA:2018:2284

Ono filed a European patent application EP ‘517 A1 entitled: ‘Immunopotentiating compositions comprising anti-PD-L1 antibodies’. After the rejection of Pfizer’s third party observations at the EPO, Pfizer lodged proceedings at the German Verwaltungsgericht in Munich claiming the co-ownership of EP ‘517 A1. The EPO subsequently stays the proceedings before grant.

Ono now requests that the Interlocutory Judge of the District Court of The Hague orders Pfizer to communicate to the EPO that the proceedings to grant should be resumed and to withdraw the proceedings in Munich. The Judge states it has no jurisdiction to hear these claims. The damages that Ono claims to incur in the Netherlands by not being able to enforce it’s patent are too remote from the specific claims in the current proceedings. Moreover, Ono’s claims relate solely to actions that should be taken abroad.

Regarding costs, the Judge ruled that the enforcement directive is not applicable as the connection between these proceedings and the intended enforcement of the patent after grant by Ono is too remote.

A copy of the decision can be read here.

One Response

  1. Attentive observer says:

    It looks as Ono’s action is a tit for tat.

    It is not surprising that the Dutch judge dismissed the claim. Ono claimed that in view of the fact that the patent could have effect in the Netherlands, he could filed such a claim. Hard to swallow. Why the Holland and not any other jurisdiction in one of the EPC member states? Unless the Munich Court declares itself non-competent, Ono will, in any case have to fight before a German court, as the claim has been filed there.

    Pfizer filed an action before the Munich administrative Court, knowing very well that this court was not competent to decide on the co-property status, and had to transfer the case to the Munich Civil Court. Why it did so, is not immediately apparent, but this way of proceeding is apparently possible in Germany.

    In reply to the request to stay which has been granted by the Legal Department of the EPO, Ono filed a counter request to resume proceedings. Ono claims that the request, as not having been filed with the competent court, it is not effective. An offer by Ono not to act against Pfizer has been ignored by the latter. No wonder.

    In reply, Pfizer obviously required dismissal of Ono’s request.

    As both parties requested Oral Proceedings, those will happen before the Legal Department, but will not be public. It is not wrong to think that the loosing party will appeal the decision, the Legal Board of Appeal will look into the matter. So wait and see.

    Interesting is that the value of the action before the German court has been set at 30 Millions €.

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