Publications

March 22, 2012

Can an SPC for an active ingredient A prevent the commercialization of a drug containing active ingredient A and
an active ingredient B ?

The Court of Justice of the European Union clarifies the situation in its decision Novartis v. Actavis (C-442/11).

On February 9, 2012, the Court of Justice handed down a much anticipated Order in the case Novartis AG v. Actavis UK, Ltd.

Novartis had obtained a British SPC for its active ingredient Valsartan, which was based on a patent specifically protecting that active ingredient and also on a M/A for that active ingredient alone.

Actavis had announced its intention to commercialize a generic medicament in the United Kingdom containing Valsartan but also another active ingredient, hydrochlorothiazide, as of expiry of the basic patent.

Novartis referred the matter to the British courts, alleging that its SPC would be infringed by such a commercialization.

In turn, Actavis alleged that Novartis's SPC could only protect Valsartan alone, and not in association with another active ingredient.

In this context, the British High Court of Justice turned to the CJEU for an answer to the question of whether an SPC for an active ingredient protects uniquely that active ingredient, or also protects that active ingredient when associated with another active ingredient.

The CJEC decided that when an active ingredient is protected by a basic patent, which can prevent the commercialization of a drug containing that active ingredient, in combination with one or more other active ingredients, an SPC granted for that same active ingredient must also be able to prevent the commercialization by a third party of a drug containing that product.

In other words, an SPC for an active ingredient A must be able to prevent the commercialization of a drug containing active ingredient A associated with an active ingredient B.

This case should clarify the situation in France where the Court of Appeal of Paris has handed down a decision (September 16, 2011) which is isolated and contrary to other French decisions, in a parallel case concerning the French SPC of Novartis for Valsartan, finding that the association of Valsartan with Actavis's hydrochlorothiazide was not protected by the SPC.

Thierry Caen
 

February 29, 2012

JurisClasseur Trademarks - Designs and Models

Issue: 03,2012
Date of modification: January 8, 2012

Volume 7225: TRADEMARK RENEWAL
By Olivier Thrierr

Presentation and analysis of the procedure for trademark renewal by the French IP Office:

- Renewal in case of assignment of the trademark;

- Comparison with the Community Trademark;

- Effects of renewal.

Revue PI n10-2011 Commentaires Marques (pdf - 337.15 KB)

October 28, 2011

JurisClasseur Trademarks - Designs and Models

Issue: 01,2012
Date of modification: 28.10.11

Volume 7210: TRADEMARK REGISTRATION
By Olivier Thrierr and Alain Thrierr
 

Presentation and analysis of the procedure for trademark registration at the French IP Office - filing, examination, publication, opposition, registration:
- Ways to file - cf. in particular the introduction of "e-filing";
- Conditions for trademark protection;
- Grounds for rejection and conditions;
- Opposition procedures, prior rights, rules of procedure, determination of the risk of confusion - latest developments affecting practice
at the French IP office, comparison with the OHIM
- Contesting decisions of rejection;
- Latest amendments to the IP Code, orders of April 28 and September 2, 2008.
 

Lien : www.lexisnexis.fr

March 1, 2010

One year of case law on the absolute grounds for Community Trade Mark (CTM) refusal

Column by Oliver Thrierr and Lorraine Clavier.

> More (in French)