Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Netherlands: Dutch ruling on validity of SPC and legal costs

In a recent ruling (February 2 2016) the Court of Appeal The Hague assessed the validity of a patent and SPC of Janssen Pharmaceuticals, Inc. The Court further decided on awarding costs based on European directive 2004/48/EC.

Validity of SPC

In first instance Mylan BV requested invalidation of the Dutch part of European patent EP 0 566 709 of Janssen. The District Court rejected invalidation of the patent because it had expired. However, the SPC was invalidated for lack of inventive step of the patent claims.

The Court of Appeal confirmed this decision. It considered that the combination of two active ingredients into a single preparation was obvious over a disclosure relating to administration of the two compounds in two separate preparations. Synergy of the combination could not be relied on in assessing inventive step because this effect was considered to be inherently present in the prior disclosure as well.

The decision and reasoning are in line with a decision of the German Bundesgerichtshof, but deviate from the decision of the Spanish Sección de la Audiencia Provincial de Navarra, which considered the Spanish part of the patent inventive. The same case is also pending before the courts in Hungary and Italy, but these have not yet issued a decision.

Litigation costs

In first instance Mylan was not awarded full litigation costs, which decision Mylan appealed against. The Court of Appeal confirmed the decision because it considered that Articles 1019 and 1019h of the Dutch Code of Civil Procedure (implementation of directive 2004/48/EC) only relate to costs of enforcement of IP rights. Invalidity proceedings, as in the present case, in which a threat of infringement was insufficiently substantiated, are outside the scope of the directive. This is in agreement with the CJEU decision of November 15 2012 (C-180/11 Bericap-ruling), and with an earlier ruling of the current Court of Appeal where costs were awarded in invalidity proceedings (Danisco-ruling, February 26 2013). Contrary to the present case, the invalidity proceedings were started by Danisco with the intention to defend against an impending infringement claim, and litigation costs could therefore be awarded.


Next year the Unified Patent Court will be operational. Then (if the patent owner has not filed an opt-out) such invalidity proceedings will have to be held before the UPC and parallel proceedings in different countries (except for Spain) will no longer be necessary. It will be interesting to learn how the UPC will rule on awarding recoverable costs.


Marijke Westra

V.O.Johan de Wittlaan 72517 JR The HagueThe NetherlandsTel: +31 70 416 67 11Fax: +31 70 416 67

more from across site and ros bottom lb

More from across our site

Civil society and industry representatives met in Geneva on Thursday, September 28 to discuss a potential expansion of the TRIPS waiver
Sources say the beta version of the USPTO’s new trademark search tool is a big improvement over the current system but that it isn’t perfect
Canadian counsel weigh in on the IP office’s decision to raise trademark filing fees in 2024 and how they’re preparing clients
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
Shira Perlmutter, US Register of Copyrights, discussed the Copyright Office's role in forming generative AI policy during a House of Representatives hearing
The award marks one of the highest-ever damages received by a foreign company in a trademark infringement suit in China
Two orders denying public access to documents have reignited a debate over a lack of transparency at the new court
Rouse’s new chief of operations and the firm’s CEO tell Managing IP why they think private equity backing will help it conquer Europe
Brian Landry, partner at Saul Ewing, reveals how applicants can prosecute patent applications in the wake of the Federal Circuit's In re Cellect ruling
Ronelle Geldenhuys of Australia’s Foundry IP considers the implications complex computer technologies such as AI have on decision-making