Key points
- The question is whether the interventions are admissible.
- The patentee had initiated "arbitration proceedings under Portuguese Law No. 62/2011 of 12 December 2011" against the interveners.
- These are the mandatory "arbitration" proceedings for pharma patent cases under Portuguese law.
- It seems that this kind of mandatory arbitration procedure is of historical interest only. "The 2018 amendment to Law 62/2011 removed the mandatory arbitration requirement for disputes in connection with pharmaceutical patent infringements, subjecting them to the jurisdiction of the Intellectual Property Court." (link); idem Global Patent Litigation, Portugal, para. 200.
- "It has not been contested that Articles 2 and 3 No. 1 of Law No. 62/2011 confer on arbitration tribunals exclusive jurisdiction in disputes, including requests for preliminary injunctions, arising from industrial property rights related to so-called reference medicines and generic medicines "
- "The dispute is about whether these proceedings, in view of their subject and nature, qualify as "infringement proceedings" within the meaning of Article 105 EPC.
- "Consequently, an autonomous interpretation of what constitutes "infringement proceedings" should avoid interfering with national legislation by adopting a definition that is tailored to some, but not all, national systems. Moreover, the legislative intent has to be taken into account."
- " The purpose of Article 105 EPC is to avoid parallel proceedings (infringement proceedings, nullity proceedings or declaratory proceedings for non-infringement) before national courts of the contracting states while centralised opposition and opposition appeal proceedings are still pending. This ensures efficient use of the judicial system and avoids contradictory decisions (see G 4/91, points 3 and 4 of the Reasons; G 1/94, OJ EPO 1994, 787, point 7 of the Reasons)."
- " In the board's opinion, it does not matter whether these proceedings are set off in the present case by a request for a marketing authorisation either. What matters is that the exclusive rights conferred by a European patent are invoked in these proceedings and their enforcement is sought. Indeed, "infringement" means contravention of the rights conferred by a patent on its owner, which are rights to exclude (prevent) third parties from making use of the subject-matter of a patent without the authorisation of the patent proprietor. The board therefore concurs with the definition given in decision T 1713/11 that "proceedings for infringement" within the meaning of Article 105(1)(a) EPC are (national) proceedings "meant to establish whether a third party is commercially active in an area that falls within the patentee's right to exclude" (T 1713/11, point 2.6 of the Reasons)."
- The interventions are admitted.
- See also T0223/11 concerning the predecessor administrative Portuguese proceedings.
- EPO
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2022/09/t-068919-ii-intervention-and-portuguese.html
