The Danish Maritime and Commercial High Court dismisses Novartis’ claims for a PI based on a patent application in a highly principled matter

In March 2022, Novartis filed an application for preliminary injunction against three pharmaceutical companies, Glenmark, Zentiva and Viatris. The request for a PI was based on the patent application EP 2 959 894.

While EP ‘894 has not yet been granted, EPO’s Technical Board of Appeal had remitted the patent application to the Examining Division with the order to grant a patent on the basis of a single claim of Novartis’ main request.

On that basis, Novartis argued that the Examining Division would, in the near future, grant the patent before the oral hearing in the PI proceedings, and that Novartis’ therefore had sufficient cause of action/legal interest in commencing PI proceedings. The purpose of filing a PI application before the grant of patent was, Novartis argued, to ensure that a PI could be issued very swiftly as soon as the patent was granted, and that it would constitute a violation of the Enforcement Directive, should the Court dismiss the applications for a PI.

The defendants on the other hand argued that as long as the patent has not yet been granted, legal proceedings can not be commenced, as there would not be sufficient cause of action. Further, the defendants argued that it was not clear when the patent would be granted and there was still scope for amending the description, which could have a bearing on the construction.

On that basis, the defendants requested that the Court dismiss the PI application for lack of legal interest.

The Danish Maritime and Commercial High Court dismissed the PI application on the grounds that there was no cause of action as there was no decision to grant. The Court also ordered Novartis to pay legal costs to the defendants.

The decision is available in Danish here.

Glenmark and Zentiva were represented by BUGGE VALENTIN.