Posted: September 25th, 2017
Synthon B.V. v. Yeda Research & Development Co. Ltd, District Court The Hague, 6 September 2017, Case Number ECLI:NL:RBDHA:2017:10315
Yeda Research & Development Co., Ltd is the proprietor of EP 2 405 794, which claims a dosing regimen for glatiramer acetate (Copaxone®) for the treatment of Multiple Sclerosis. In proceedings before the District Court of The Hague, Synthon B.V. claims the invalidation of EP794, arguing that it lacks novelty as well as inventive step. It also seeks a declaratory judgment that a dosing regimen as claimed in EP794 lacks novelty and inventive step and it claims that Yeda be ordered to pay Synthon’s legal costs.
In parallel opposition appeal proceedings before the EPO, Yeda had informed the TBA that it withdrew its approval to the text of EP 794, after which EP794 was revoked. Synthon subsequently reduced its claim in the Dutch proceedings: it no longer claimed nullification, but it still claimed a declaratory judgment and the cost order. Before the grant of EP794, several divisional applications had been split off, including EP 2 630 962. However, on 26 January 2017, Yeda withdrew the Dutch designation of EP962. One day later, on 27 January, several second generation applications were split out of EP962.
Yeda argued that Synthon no longer had an interest in obtaining the claimed declaration, since by operation of article 76(2) EPC, no divisionals split out of EP962 after the date of withdrawal of EP962’s Dutch designation can have any effect in The Netherlands. Yeda submitted a declaration from a European patent attorney confirming this. Synthon argued that it still had an interest in a declaratory judgment, because such judgment would have a persuasive effect in (potential) parallel proceedings in other jurisdictions. Furthermore, Synthon pointed out that Yeda had issued a press release after its US patent had been invalidated, saying that Yeda would continue to vigorously protect its Copaxone franchise. Synthon argued that it would be able to use the declaratory judgment to demonstrate to its customers that they need to be worried if Yeda would take legal action against them.
The District Court refused to grant the declaratory judgment, ruling that Synthon had no interest in obtaining the declaratory judgment since Yeda had no patents rights to enforce in The Netherlands. The “persuasive effect” in parallel proceedings abroad does not constitute a sufficient interest either . Furthermore, the Court ruled that Synthon did not need such judgment to show to its customers that there was no cause for concern about potential infringement action by Yeda. Synthon could achieve the same result by showing the patent attorney’s statement Yeda had submitted. However, since Synthon had withdrawn its primary claim for invalidation of EP749 when Yeda submitted proof that it no longer patent protection for its dosing regimen in the Netherlands, the Court considered Synthon to be the overall successful party and granted the cost award.
A copy of the judgment (in Dutch) can be read here.
Headnote: Jaap Bremer, BarentsKrans