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Shut up or infringe a patent

October 2010 - Litigation & Dispute Resolution. Legal Developments by Norrbom Vinding Law Firm, member of ius laboris.

More articles by this firm.

By telling a journalist of his company’s intention to place a generic version of a pharmaceutical product on the market before the competitor’s patent expired, a CEO was guilty of patent infringement.

The earlier patent infringement can be stopped, the better. Therefore, the interesting point in this case before the Swedish Stockholm District Court was the question of what it takes to constitute patent infringement.   A global pharmaceutical manufacturer held a patent on a medicinal product for the treatment of brittle bone disease, also known as osteoporosis. The patent expired in 2003, but the protection of the product had been extended until 2008 by virtue of a supplementary protection certificate.   Already in 2004, the CEO of a generic manufacturer announced that they would be marketing a copy product in Sweden "in the near future". And the generic manufacturer then applied to the Swedish medicines agency to have the copy included on the list of products that are eligible for reimbursement when bought by consumers.   The patent holder sued the generic manufacturer, claiming that the very announcement by the CEO of the intended product launch constituted infringement. The central issue was therefore how early in the process patent infringement may be established.  

Announcement was damning
The Court started out by confirming the validity of the supplementary protection certificate. It would therefore constitute an infringement of the patent holder's rights if the generic manufacturer actually sold its copy in Sweden while the original pharmaceutical product was still protected by the supplementary protection certificate.   In addition, the Court found that the CEO's announcement could also be seen as an infringement, signalling as it did that his company had a will to sell the product before the supplementary protection certificate had expired. And that is not legal.


Norrbom Vinding notes:

  • that, under Danish patent law, too, ‚Äėoffering for sale' a patented product without the holder's consent is illegal. The Swedish judgment is a welcome contribution towards shedding some light on what ‚Äėoffering for sale' means in terms of patent law; and
  • that the Swedish court did not consider the issue of whether it would constitute a separate infringement for the copy products to be included on the list of products that are eligible for reimbursement when bought by consumers. This issue is crucial since this list is often the first sign that patent holders will get that competition from generic copies is on its way