Spring direct naar de hoofdnavigatie of de inhoud

Novartis vs Actavis

Home / News / Novartis vs Actavis

Novartis vs Actavis

Novartis vs Actavis

Decision by the Court in The Hague in an application for temporary injunction.

On 8 July 2009, the Court in The Hague decided in an application for temporary injunction on the question whether a patent owner still has the right to enforce his patent as a temporary measure, if the patent was revoked in first instance in view of the fact that the revocation could be overruled in the appeal proceedings.

In this case the patent of Novartis was revoked by the court in first instance. Novartis had filed an appeal against this decision.

While the appeal was pending, Novartis filed an application for temporary injunction, requesting that the court prohibit the parties Actavis and Mylan any act that would infringe the subject-matter of the Novartis patent.

The court judged that such a measure could be taken in exceptional cases provided that the requestor has an urgent interest and that the court in first instance has made an obvious error.

In the present case the court agreed with the requestor that there was indeed an urgent interest, but did not recognize an obvious error in the decision of the court of first instance.

The requestor argued that the court in first instance had made obvious errors by not evaluating the inventive step using the problem solution approach. The court in the application for temporary injunction however decided that the problem solution approach, although usually applied, is merely an aid.

The court further considered the argument of Novartis that the decision on lack of inventive step would have been insufficiently motivated by the court in first instance. In reply to this argument, the court in the application for temporary injunction decided that this is a typical appeal argument, which should be judged by the appeal judge and not by the court for temporary injunction.

Novartis further stated that the court in first instance had based its conclusion about lack of inventive step on the wrong prior art. The court held that verifying this statement would require an extensive study of the technology, the patent and the prior art that should be taken into account according to Novartis, so that without extensive further research it cannot be determined that this statement of Novartis is correct.

The court for temporary injunction further decided that accepting that the aspects in the decision of the primary court supplied by Novartis indeed are obvious errors would too much stretch the meaning given to this concept by doctrine and case law.

Accordingly the court refused the request of Novartis.

Also see these experts

Mohammad A. Bidakhvidi

  • Dutch Patent Attorney
  • Associate

Marco Molling

  • European Patent Attorney
  • Dutch Patent Attorney
  • Belgian Patent Attorney
  • Partner
More experts