Intellectual Property, Patent Law, Patent Infringement Invalidity Regulatory Law Pharmaceutical

In the case of Les Laboratoires Servier and Anotherwere allowed to market their generic product prior to
v KRKA Polska SP.ZO.O. and Another [2006], thethe outcome at trial, the National Health Service
claimants made an application for an interim injunction("NHS") pricing policies relating to the prescriptions of
to prevent the marketing and distribution of a druggeneric pharmaceuticals would have caused
which they claimed infringed their patent. Theirreparable continuing losses in respect of revenues
claimant companies were in the business ofand market share.
manufacturing and researching pharmaceuticalIn addition, the claimants maintained that the patent
products. The first claimant was the second largestwas valid, and therefore the defendants had failed to
French pharmaceutical company worldwide, and thedemonstrate that the claimants' action had shown no
second claimant was a wholly owned subsidiary thatreal prospect of success. The defendants submitted
marketed and researched such products within thethat the patent had been invalid on the following two
UK.grounds:
The defendants were members of a group ofLack of novelty and obviousness on the basis that a
companies involved in the sale and distribution of aprevious patent, EP 0 308 341 (patent 341),
large number of generic pharmaceutical productsdescribed the manufacturing process for the alpha
worldwide.crystalline variant; and
The claimants' most successful product from a salesThe claimants had caused prior sales of the alpha
standpoint was an angiotensin converting enzymecrystalline variant before the priority date, and, that
inhibitor drug by the name of Coversyl. That drugprior sale would have enabled a skilled person to
contained the active ingredient perindopril erbuminediscover the manufacturing process of the alpha
("Perindopril") in the alpha crystalline form. Thecrystalline compound.
claimants had registered patent EP (UK) 1 296 947,Three main issues fell to be decided before the
which related to the alpha crystalline form ofcourt, namely:
Perindopril and the method of its preparation. ThatWhether there was a serious issue to be tried;
patent had been unsuccessfully objected to by theIf so, whether the defendants had demonstrated
defendants. The appeal by the defendants in relationthat the case advanced by the claimants held no real
to that decision was still pending.prospect of success; and
The claimants discovered that the defendants hadIf not, whether the balance of convenience lay in
obtained marketing authorisation for a genericfavour of granting the injunction.
Perindopril in the United Kingdom. That authorisationThe court held that in this case, the issue of the
had been granted via a neutral recognition procedure,validity of the alpha crystalline patent was
the reference state being Hungary, where theundoubtedly a serious issue, and was one that fell to
claimants had previously successfully prevented thebe determined at the trial of the main action. The
defendants from marketing a generic alpha crystallinedefendants had strong arguments with which to
product.question the validity of the patent on both grounds
Correspondence thus ensued between the parties,of challenge. However, the basis of the challenge on
by which the claimants requested productthe ground of lack of novelty concerned the
descriptions and samples to be sent for independentconstruction of a particular section of the
analysis. Pending the outcome of the main action, themethodology contained within patent 341.
claimants issued proceedings and sought an interimFurthermore, whilst the defendants had shown that
injunction preventing the defendants from importing,there had been a prior sale of the alpha crystalline
offering to dispose of or disposing of within thevariant, the evidence supporting the proposition that
United Kingdom, a generic pharmaceutical productthat sale would enable a skilled person to discover
containing, as its active ingredient, Perindopril in thethe manufacturing process had been based upon a
alpha crystalline form.number of assumptions. Although these assumptions
The claimants had previously obtained such anwere compelling, the evidence provided by the
injunction against another generic pharmaceuticaldefendants had not demonstrated that the claimants'
manufacturer, and a further manufacturer hadcase had no real prospect of success.
undertaken not to market such products until theThe court therefore decided that in those
determination of the main action. However, thecircumstances, the irreparable, continuing, and
defendants resisted that application, and soughtunquantifiable losses that would have been suffered
summary judgment against the claimants on the basisby the claimants (had the defendants been allowed
that they had shown no reasonable prospect ofto market their generic product pending the outcome
succeeding due to the patent being invalid.of the trial) resulted in the balance of convenience
The claimant submitted that there was indeed afalling in favour of the claimants. Therefore, the
serious issue to be tried. In relation to the balance ofinjunction that was sought would be granted.
convenience, it was submitted that if the defendants