A niche blog dedicated to the issues that arise when supplementary protection certificates (SPCs) extend patents beyond their normal life -- and to the respective positions of patent owners, investors, competitors and consumers. The blog also addresses wider issues that may be of interest or use to those involved in the extension of patent rights. You can email The SPC Blog here

Thursday 24 March 2011

Novartis v Actavis and Valsartan in Düsseldorf: an update

On Monday 21 March, The SPC Blog posted this item on two decisions of the Düsseldorf District Court, issued on 8 March 2011, in preliminary proceedings which had been initiated by Novartis AG against Actavis Deutschland GmbH and Actavis Ltd, Malta. Our information was kindly supplied by Frank-Erich Hufnagel and Cordula Tellmann (Freshfields, Bruckhaus Deringer LLP, Düsseldorf) who acted for Novartis.

We have now heard from Henrik Holzapfel and Thomas Bopp(Gleiss Lutz), who acted for the two Actavis defendants. They comment as follows:
"We fully agree with Frank-Erich's and Cordula's report on the proceedings, but we thought it would be worth mentioning two additional matters which may or may not be interesting for your readers.

1. In the joint oral hearing for both proceedings, the court acknowledged that difficult questions of interpretation of the SPC Regulation were at stake. The issue was to be finally decided by the ECJ. In this context, it is particularly noteworthy that the court has made any enforcement of the preliminary injunctions dependent on Novartis providing securities (of EUR 12 million against Actavis Germany and EUR 3.6 million against Actavis Malta).

2. The court has ordered Novartis to file actions on the merits against Actavis Germany and Actavis Malta by 8 April 2011. In actions on the merits, a referral to the ECJ will be possible, other than in preliminary injunction proceedings".
Henrik and Thomas have also sent the blog this order of 17 March 2011, in which the Düsseldorf District Court ordered Novartis to file an action on the merits against Actavis Germany. In the parallel preliminary injunction proceedings against Actavis Malta there is an equivalent decision.

Coincidentally, The SPC Blog received -- in the same batch of emails and just a few seconds after that of Henrik and Thomas -- another email from Cordula accompanied by this English language translation of the decision of 8 March which was the subject of the earlier post.

The SPC Blog thanks all the attorneys involved for their willingness to share this information with our readers. For those of us with little experience of the manner in which litigation is conducted in Germany, it has been very helpful and instructive.

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