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Dutch court forbids involvement in patent infringement in Portugal

A recent decision of the preliminary relief judge offers new possibilities in the Netherlands for holders of intellectual property rights valid abroad.

In the case of Boehringer Ingelheim Pharma GmbH versus the corporate collective Teva it has been ruled in summary proceedings that Teva Pharma NL domiciled in the Netherlands is acting in violation of the standard of due care by not keeping the affiliated Teva Pharma PT domiciled in Portugal from infringing the rights of Boehringer Ingelheim.

Boehringer Ingelheim is engaged in research, development, trade and production of medicines. Boehringer Ingelheim had a European patent for nevirapine and analogs thereof, and the use of these compounds in the treatment of HIV. This patent, however, has expired upon reaching the maximum term. Boehringer Ingelheim is also holder of the Portuguese national patent for a method for making these compounds. This patent is the basic patent for a supplementary protection certificate, which is coming into force shortly. The patent, and subsequently the certificate, protect the obtained product under Portuguese law. In the Netherlands there is also a certificate in force.

Teva Pharma NL and Teva Pharma PT, both subsidiaries of Teva Europe, are engaged in the importation and exportation, trade and manufacture of (generic) pharmaceutical products. Teva Pharma NL is holder of a European marketing authorization for a medicinal product having nevirapine as active ingredient. Such a medicinal product is traded in Portugal by Teva Pharma PT under the name Nevirapine Teva. Teva Pharma NL is also the holder of the registration of this medicinal product in Portugal.

In Portugal Boehringer Ingelheim has instituted proceedings against Teva Pharma NL and Teva Pharma PT about infringement of rights. In addition, Boehringer Ingelheim has started a procedure against the grant of a Portuguese registration in the name of Teva Pharma NL. At the same time, in the Netherlands, Boehringer Ingelheim has claimed in summary proceedings that Teva Pharma NL be enjoined from committing unlawful acts vis-à-vis Boehringer Ingelheim.

The preliminary relief judge has awarded this injunction. The judge declared himself competent to render, on account of the urgent interest, a provisional judgment on the ground of European law and the fact that Teva Pharma NL is domiciled in the Netherlands. Thereupon, the judge considered that the Portuguese registration is in the name of Teva Pharma NL, and that Teva Pharma NL should be aware of the rights of Boehringer Ingelheim in Portugal. The validity of the Portuguese patent has been extensively addressed under Portuguese law by the Dutch judge, and this patent was found valid. Thereupon the judge held that Teva Pharma NL, by giving (implicit) permission for the trading of Nevirapine Teva by Teva Pharma PT in Portugal, is acting unlawfully vis-à-vis Boehringer Ingelheim.

Thus, facilitating, or not preventing, infringing acts by Dutch companies abroad has been found unlawful. This creates possibilities for holders of foreign rights to prevent infringement by Dutch companies.

Koen Bijvank of Vereenigde was involved in this case on the side of Boehringer Ingelheim.