Wednesday, 25 July 2012

Strategic use of UK disclosure aids Danisco in EPO rulng

Via Jason Costa comes news of victory for Danisco before the European Patent Office (EPO) in its long-running dispute with Novozymes.  Both are Danish biotech businesses that are engaged in enzyme manufacture. In these proceedings Danisco revoked one of Novozymes’ European patents for coated animal feed enzymes, which had been asserted by Novozymes in Denmark, Germany, the Netherlands and the United Kingdom (with proceedings under related utility models in Finland). PatLit reported here on proceedings between the same companies in England and Wales in June of this year.

According to the information received:
"The EPO revocation was based in part on Novozymes’ own documents (obtained by disclosure in the United Kingdom and released for use in the EPO by the Patents Court for England and Wales), which undermined Novozymes’ submissions in the EPO. This revocation restores the ability of Danisco -- acquired by DuPont in May 2011 -- to engage in commercial activities in Europe and provide customers with innovative solutions in the animal feed business.

This decision sheds light on the discussions concerning the impending unitary patent in Europe, because it emphasises the importance of UK-style disclosure in determining the validity of commercially important patents. Novozymes initially refused to allow the documents to be used in the EPO.  However, the decision of the Patents Court at [2012] EWHC 696 (Pat) [this is not yet available online on BAILII] made the crucial documents available. The Patents Court and Court of Appeal initially refused to make the documents available to the EPO, but this position changed after Novozymes was held to be at fault in requesting a late adjournment of the UK trial. The decision also indicates the speed with which the EPO can decide accelerated proceedings: the patent was granted on 11 November 2009, opposed on 30 March 2010, revoked by the Opposition Division on 7 July 2011 and finally revoked by the Technical Board of Appeal on 29 June 2012 (31.5 months from grant to final revocation)".
This does not mean that the matter is at an end:
"Danisco will also seek compensation for the damage caused by a preliminary injunction originally obtained by Novozymes in Denmark. On May 25, 2012, before the Technical Board of Appeal revoked the EP'592 patent, the Eastern High Court in Copenhagen had revoked that preliminary injunction and ordered Novozymes to pay Danisco 1.5 million DKK (Danish kroner) in legal costs".


MaxDrei said...

I have always argued that, without the discomfiting thought of disclosure in England (and the USA), the conduct of patent applicants, patent owners and their competitors would be far less honorable. Joni Mitchell would surely agree that, with English common law fact-finding as with many other things, "You don't know what you've got till it's gone"

fred v III said...

An extract of the decision can be found on the K's Law weblog.

Anonymous said...

And a detailed account of the UK and EPO proceedings has been posted on the Kluwer Patent Blog here.