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The Netherlands: The Hague Court declines jurisdiction in Pfizer v Ono

In a recent ruling by the Court of The Hague C/09/545302 / KG ZA 17-1636, Pfizer and Ono faced each other over an alleged abuse of German process law by Pfizer.

In short, Ono wished to put an end to what it views as the unlawful stalling, by Pfizer, of the grant of its patent application EP2206517 A1. Through this application Ono seeks to protect immunopotentiating compositions comprising anti-pd-l1 antibodies.

Pfizer started a reclamation procedure in Germany in order to obtain co-owner-ship of EP'517. However, Pfizer filed the reclamation procedure after previously having filed third party observations against the patent application. The latter was put forward as proof by Ono that Pfizer had no stake in EP'517, which would make the reclamation procedure unlawful. The reclamation procedure resulted in a suspension of the grant procedure of EP'517 by the European Patent Office (EPO). Subsequently, Pfizer also failed to comply with Ono's request to cooperate in ending the suspension of the grant procedure. Accordingly, Ono claimed that Pfizer had acted wrongfully towards Ono, which wished to maintain EP'517 in the Netherlands among other countries.

Ono primarily demanded that Pfizer be compelled to instruct the EPO to resume the grant procedure of EP'517. The subsidiary demand sought to make Pfizer withdraw its reclamation procedure and forbid it from filing a new reclamation procedure before EP'517 is granted.

The court observed that the US-based Pfizer does not have an address within the European Union. Accordingly, competency of the court must derive from Article 6 Brussels I bis-Vo in combination with the Dutch Code of Civil Procedure (Rechtsverordeningen, Rv). In layman's terms, cause (locus actus) or damages (locus damni) must have occurred in Dutch jurisdiction for the court to be competent.

The court did not accept Ono's plea that damages occured within Dutch jurisdiction due to an inability to enforce EP'517 in the Netherlands as a result of the suspension.

The court was of the opinion that the apparent desire of Ono to enforce EP'517 after grant, if so desired, in the Netherlands, is not substantial enough to render the court competent. In line with this reasoning the court declined jurisdiction.

Ferdinand Leeger

V.O.Carnegieplein 5, 2517 KJThe HagueThe NetherlandsTel: +31 70 416 67 11Fax: +31 70 416 67

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