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A not so free bet

September 2011 - Intellectual Property. Legal Developments by Norrbom Vinding Law Firm, member of ius laboris.

More articles by this firm.

Patents
The Swiss Supreme Court recently ruled in favour of a generic manufacturer, but also ordered it to pay costs to the patent holder. For only when the patent holder had sought an interim injunction did the generic manufacturer state that it would not market its generic copy.
In most European countries (Denmark included), patent holders seeking an interim injunction against alleged infringers will usually have to pay costs to the other party if no injunction is granted.
In this case, the Swiss Supreme Court was asked to consider the question of costs in a case where only when the patent holder sought an interim injunction against the generic manufacturer did the generic manufacturer inform the patent holder that it would not market a generic copy until the patent holder’s product had come off patent.
The patent holder contacted the generic manufacturer when it became aware that a marketing authorisation had been issued for a pharmaceutical product which the patent holder believed infringed its patent rights. The patent holder demanded that the generic manufacturer cease and desist from marketing the product until it had come off patent.
Too late
First, the generic manufacturer simply responded that it was company policy not to infringe. Later, the generic manufacturer wrote that the product did not infringe the patent at all. Only when the patent holder sought an interim injunction did the generic manufacturer inform the patent holder that it would not be marketing the generic copy until the patent holder's product had come off patent.
On that basis, the enforcement court refused to issue an interim injunction, and so the patent holder lost the case on a technical point. The enforcement court decided that the parties should split the court fee and the generic manufacturer should not pay costs to the patent holder. But the patent holder should not pay costs to the generic manufacturer either.
The patent holder appealed the order on costs to the Swiss Supreme Court, which held that the actions of the generic manufacturer had given the patent holder reason to seek an interim injunction. Accordingly, the patent holder had acted in good faith, and the generic manufacturer was ordered to pay costs to the patent holder as well as all court fees.
 
Norrbom Vinding notes:
  • that the case concerned a supplementary protection certificate for a pharmaceutical product covered by a basic patent which has been the subject of a number of other legal proceedings across Europe; and

  • that the case shows that it is important to carefully consider the wording of the written notices which are usually exchanged between the parties before an interim injunction is sought in cases involving patent infringement and that, in this case, the generic manufacturer’s likely bet that the patent holder would not seek an interim injunction turned out not to be free after all.
The above does not constitute legal advice and should not be relied upon as such

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