Unauthorised disclaimer

Teva vs. MSD: Court of The Hague, 17 May 2006, HA ZA 05-2019. Teva Pharmaceuticals Europe B.V. c.s. versus MSD Overseas Manufacturing Co. (Ireland).

"It is stated a priori that the court, when answering - under Dutch patent law - the question whether a disclaimer such as the one at issue is permissible, seeks alignment with the case law of the Enlarged Board of Appeal of the EPO, as developed in G1/03 (OJ EPO 2004, 413) and G2/03 (OJ EPO 2004, 448) of 8 April 2004. In said judgments the Enlarged Board of Appeal of the EPO held that a disclaimer without basis in the original documents was only allowed in three cases: (i) as an exclusion of the fictitious state of the art, (ii) as an exclusion of an accidental anticipation and (iii) by exclusions of patenting for non-technical reasons. (...)

The above leads the court to the conclusion that Blum is not so unrelated and remote that the average skilled person never took this document into consideration when searching for other biphosphonates, which could be used in the treatment of bone disorders. This means there is no accidental anticipation and the dislaimer forms unauthorised added matter added matter. This disclaimer cannot, e.g. by means of partial revocation, be removed from the claim because this would result in abroadening of the scope of protection. Consequently, this ground for invalidity of NL '562 is effective, whereby as a result of the provisions of Article 15, Paragraph 1.c Regulation 1786/92 the SPC based on said invalid, but expired, patent is also invalid, so that the claim in the main action can be awarded. The other grounds for invalidity as presented by Teva need not be dealt with."

Read the entire judgment here.