Finding Vredo (Pat. Pending): The Dutch Supreme Court Decision on Escitalopram

Abstract

This article is about the pharma patent litigation sparked by Lundbeck’s blockbuster drug for 'escitalopram', a drug used for treating depression and generalized anxiety disorder.

The article focuses on the trials and tribulations before the Dutch Patent Court of Appeal and the Supreme Court, while also briefly contrasting and comparing this with the decisions in Germany and the United Kingdom.

Particular attention is given to novel substances that can be fully envisaged but cannot yet be made. Under the doctrine set out by the Technical Boards of Appeal, such envisaged substance can still be considered to be non-obvious and therefore patented if the claimed method for preparing such substance is the first to achieve this in an inventive manner. The Dutch Supreme Court follows this doctrine.

The author criticizes the lack of explanation provided by the Supreme Court in reversing the decision of the Court of Appeal. By merely referring to foreign precedent, the Supreme Court violates its duty to state its own reasons.

The article concludes by outlining the practical impact of the decision of the Supreme Court.

A previous version of this article also appeared in the Dutch technology law journal "BIE" and is available at: http://ssrn.com/abstract= 2406727.

Keywords: patents, patent, pharma, pharmaceutical, substance, substance protection, inventive step, non-obviousness, claim, T-595/90, escitalopram, citalopram, Lundbeck, Tiefenbacher, European Patent Convention, EPC, Tsoutsanis

JEL Classification: K06, K10, K11, K13, K19, K29, K32, K39, K40, K41, K42, K49, H51, I10, I11, I19, L12, L43, L50, L65