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Netherlands: Urgency defined in patent case

In The Netherlands, urgent cases can be dealt with in provisional proceedings. Standard case law dictates that in patent cases, urgency is assumed on the basis of a continuing infringement. Urgency can however be lost under special circumstances. In recent case law, such special circumstances have included the lapsing of a significant amount of time between sending a warning letter and serving the writ for a provisional injunction.

In order to obtain a provisional injunction in an urgent case, what is furthermore needed in the Netherlands is that there is no "serious chance" that the patent will be held invalid. A final verdict on validity by the EPO Board of Appeal is considered a good indication to assume a priori the absence of such a "serious chance". However, in a recent case, despite the patent being held validly granted by the EPO up to appeal, an injunction was denied because urgency was considered lost. In this case, the writ had been served immediately after the EPO final decision, and no warning letter had been sent.

B Braun is the holder of European patent 556, which is the second divisional of a parent patent which has been revoked. EP 556 claims an earliest priority date in February 1996, and was granted in April 2013. EP 556 will expire in February 2017. The patent has been opposed at the EPO by BD up to appeal, but has been maintained as granted by final decision dated March 1 2016. The patent comprises a claim 1 directed to an intravenous catheter, comprising a hypodermal needle and a needle guard assembly.

BD markets in The Netherlands (as well as in at least Germany and Austria) a series of intravenous catheters, which according to B Braun infringe EP 556. Two versions of the catheter exist. The oldest version, "VPS (old)" of BD has been available on the Dutch market at least since February 2007. It has also been available on the German market. In Germany, VPS (old) was ruled to infringe EP 556 in December 2014. Similarly, in Austria (the Austrian daughter of) BD was banned from infringing EP 556 based on VPS (old). Since March 1 2015, BD markets in Germany a new version of the VPS, "VPS (new)".

In first instance preliminary injunction proceedings in The Netherlands, filed soon after having received the written decision of the EPO Board of Appeal, B Braun demanded that BD should urgently stop infringing EP 556. At the time of filing, VPS (new) was not available on the Dutch market, and the writ was silent on the characteristics of VPS (new).

B Braun asserted that there was no "serious chance" that its patent would be held invalid based on the decisions at the EPO, in Germany and in Austria. The urgency followed, according to B Braun, from standing case law on the nature of the exclusionary right of a patent. In addition, the final decision of the EPO Board of Appeal had only recently been announced, and the patent was about to expire, leaving no room for other types of proceedings. Also, the imminent introduction of VPS (new) would confirm the urgency to support a provisional injunction.

In its defence, BD informed the court that as of June 6 2016 VPS (old) would no longer be marketed in The Netherlands, and that it would be replaced by VPS (new). BD furthermore contested the urgency, because VPS (old) had been available in The Netherlands for nine years, which would void urgency in this case. In addition, BD (counter)claimed provisionally that any measures should not extend to VPS (new).

The court ruled (case C/09/508927 / KG ZA 16-454 of June 17 2016) that B Braun had lost the right to claim urgency. This was because B Braun had not sent a warning letter to the Dutch BD entity in the nine years that VPS (old) had been marketed. Moreover, the Court decided that the fact that VPS (old) had already been announced by BD to be taken from the market voided any claim on urgency on the side of B Braun. The imminent expiry of the patent, and the wish on the side of B Braun to await the outcome of the EPO appeal procedure, could not reinstall the reason for urgency, according to the Court.

As to VPS (new), the court considered its imminent market introduction could possibly have provided a reason for urgency. However, absent a complete discussion on the characteristics of VPS (new), no preliminary injunction on VPS (new) could be given.

In The Netherlands, urgency can thus now apparently be lost by not acting in a timely manner on an allegedly infringing product. A recent final decision of the EPO Boards of Appeal that the patent is valid, or an imminent patent expiry, provide no reason to (re)consider a case urgent, if the alleged infringer has been active on the market for nine years, at least under these particular circumstances. The case is still open for appeal.

Martin Klok

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

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