In the recent case Mundipharma v Sandoz (Court of The Hague, April 7 2010) the Dutch court of first instance decided that Mundipharma's patent (number EP 0 722 730) was valid and that Sandoz did infringe the claims as granted.
Two remarkable items in this decision should be mentioned here. The first is the presence of a disclaimer, which was found allowable by the court. The subject-matter of this disclaimer was only mentioned as a positive limitation in the application as filed. In this sense it was held to be "disclosed" and the rules laid down in G1/03 of the Enlarged Board of Appeal of the European Patent Office (EPO) regarding undisclosed disclaimers do not apply in this case. Further, according to the court, the disclaimer did not offend Article 123(2) EPC, because it was only introduced to prevent double patenting. The last argument of the defendant that the disclaimer would cause a lack of clarity was also found not to be persuasive, since a lack of clarity is not a ground for revocation.
The second remarkable item is that this decision was given while an appeal procedure after opposition was pending before the EPO. Normally, the court would either have stalled the procedure, awaiting the outcome of this appeal, or it would have given a decision irrespective of the appeal. Now, the court has ruled that the patent as granted was valid and infringed. The court did not consider the set of amended claims that was found allowable by the opposition division of the EPO, since Mundipharma lodged an appeal against that decision. Notwithstanding this positive ruling for Mundipharma, it cannot take any action, because the court only awarded its provisional claim for infringement, and has stalled any further decision awaiting the outcome of the appeal procedure before the EPO.
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| Bart van Wezenbeek |
Vereenigde Octrooibureaux NV
Johan de Wittlaan 7, 2517 JR The Hague
The Netherlands
Tel: +31 70 416 67 11
Fax: +31 70 416 67 99
patent@vereenigde.com
www.vereenigde.com