Tuesday, 27 August 2013

T 734/12 – Speeding Up

In this decision the Board made some interesting statements on the patent proprietor’s request for accelerated proceedings.

The request was based on three arguments: the possibility of remittal; the suggestion that the decision under appeal which turned on novelty related to an important point of law the resolution of which might take additional time; and the commercial and medical importance of the patented and approved treatment for which the appellant needed certainty as soon as possible, this being emphasized by the opponents’ plans to copy the patent proprietor’s approved indication and dosing regimen using their biosimilars.

[2] In the board’s opinion the reasons advanced by the [patent proprietor] for accelerating the appeal proceedings […] did not in themselves justify acceleration. As regards possible remittal, many appeals arise from decisions on one point only and thus include the issue whether or not to remit if successful. As regards a possibly important point of law, the board was not satisfied that there was such a point but, even if there was, it did not accept that this would necessarily require additional time, there being already a considerable case law on the question which criteria define a new patient subgroup.

[3] As regards the [patent proprietor’s] commercial significance argument, many if not all patentees consider their patents to be of commercial significance and, if that were a criterion for acceleration, it would be impossible for the board to decide which are of such importance as to merit acceleration and which not. That is doubtless one reason why acceleration has been acknowledged as appropriate when infringement proceedings are threatened or pending. The [patent proprietor] however alleged only planned copying by use of biosimilars and not that any of the opponents had infringed or were about to infringe, let alone that infringement proceedings were pending or even contemplated.

[4] However, it was clear to the board that there was a substantial measure of agreement between the parties on an early resolution of the issues […]: of the four parties, three agreed to acceleration and the fourth did not object. Such agreement is not only relatively rare but must be seen against the background of the current length of the board’s list of cases. While it gives the board no pleasure to say so, four years is currently the average time taken to dispose of pending appeals and parties filing new appeals are now being warned routinely by the board that they may expect their appeals to occupy four years. If in a minority of cases, both or most or all parties are agreed that their case should be expedited, then the board should be willing to do so. If this means that such a minority of cases thereby overtake the majority of cases where there is no such agreement, and that the list of pending cases is thereby divided into two lists of expedited non-expedited cases, then that will be a proper reflection of party disposition. Further, the public has an interest in the early resolution of disputes as to the existence or extent of a patent monopoly and it is logical to assume that a dispute in which all the parties agree to an early resolution are those which may affect the public most.

[5] Thus the board considered that in all the circumstances of the case the interests of the parties and of the public would best be served by an expedited procedure and by dealing with all outstanding issues in the present appeal proceedings. Accordingly oral proceedings were appointed for an early date in the board’s schedule and, since not all parties had presented written submissions on all outstanding issues, the board made directions intended to bring all the parties’ submissions into the same state of preparedness […].

NB: This decision also has some paragraphs that might be of interest to colleagues interested in novelty in the medical realm (new patient group; points [22-29] of the reasons).

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.