T 1125/13 (Combined meningococcal/NOVARTIS) 28-03-2014

Reasons for the Decision

1. The appellant has submitted that acceleration of appeal proceedings requires genuine and compelling reasons and that the respondent has failed to meet this standard in the present case. The board disagrees. While trivial reasons would clearly not warrant acceleration, there is no fixed standard of proof, and the appellant has not cited any legal authority for such. Indeed it follows from inter alia the Notice from the Vice-President Directorate-General 3 dated 17 March 2008 (OJ EPO 1/2014, 63), on which the appellant relies, that acceleration is always a matter for the exercise of the board's discretion (see also point 10 below). In such discretionary matters which fall to be decided on an interlocutory basis, the board has to weigh the parties' submissions on the basis that they are prima facie correct, at least to the extent that they are relevant to the issue and not so disputed that no conclusion can be drawn.

2. The respondent has advanced two arguments for acceleration. First, it says the patent in suit is so blatantly invalid that acceleration is warranted for that reason alone. The appellant unsurprisingly disputes that assertion. Self-evidently, the board cannot make any assessment at all of the strength or weakness of either party's case at the present stage of the proceedings, and certainly not just on the basis of that assertion and response. Thus the respondent's first argument does not take the matter forward.

3. The second (but primary) argument of the respondent is based on the combination of two propositions - that on application, possibly ex parte, by patentees for preliminary measures the Belgian courts do not consider the validity of patents even in cases where a revocation decision is suspended pending appeal; and that, supported by "similar facts" evidence relating to the appellant's past conduct, the appellant has made such applications in the past. Thus the inference is that the appellant might do so again in this case.

4. Those arguments together with the material referenced in the footnotes to the respondent's letter of 15 November 2013 make a prima facie case which it was open to the appellant to rebut. However the appellant has not rebutted the respondent's argument – it does not deny either that the Belgian courts will grant preliminary measures without considering the validity of patents or that it has itself sought such measures in the past. Instead, it has confined its arguments to two observations.

5. First, it says that the respondent's argument suggests that any opponent based in Belgium should be entitled to acceleration which would give Belgian opponents an advantage over others and be contrary to the principle of equal treatment. However, this overlooks both the fact that the respondent's case is that the approach of the Belgian courts in itself poses a disadvantage to Belgian opponents compared to others, and that in the present case it is the combination of the approach of the Belgian courts together with the appellant's prior conduct on which the respondent relies.

6. Second, the appellant says there is no evidence that the Belgian courts will only look very superficially at the validity of an asserted European patent. This is not correct – the respondent has referred to a note of a Belgian Supreme Court decision in a case brought by the appellant itself which reads:

"The Belgian Supreme Court has confirmed an earlier decision of the Brussels court of appeal whereby Novartis saw its claim for a preliminary injunction against Mylan's intended commercialisation of a generic sustained release formulation of fluvastatin granted. In doing so, the Supreme Court upheld the established approach applied by the Belgian courts that a granted (European) patent is presumed to be valid for the purpose of obtaining an interim injunction. This prima facie validity is not affected by a decision of the Opposition Division of the EPO against which an appeal has been lodged before the EPO Technical Board of Appeal, even if the patent concerned was revoked in its entirety by the Opposition Division. According to the Court, this directly ensues from the suspensive effect of such an appeal pursuant to Article 106(1) EPC."

That appears to support the respondent's argument both as regards the approach of the Belgian courts and the appellant's prior conduct. It is in fact the appellant who has not advanced any evidence to the contrary.

7. In its communication (see section IV above) the board summarized the respondent's argument that it feared the appellant might make application, possibly ex parte, to the Belgian courts for preliminary measures, and observed:

"While the appellant is of course free to make any submissions or none as it wishes, the Board considers that it may be significant if it states that it will not in this case make any such application to the Belgian courts as the respondent mentions. If that confirmation is given, then the threat which the respondent now perceives will be removed. Equally, if not given, the respondent's position, which is currently based on surmise arising from past experience, will have a firmer basis related to this case." (Emphasis added)

8. The appellant has replied to that particular point as follows:

"In section 4 [of the communication] the Board suggests that this request would be unnecessary if the appellant could state that it will not in this case make an application for preliminary measures to the Belgian courts. The appellant duly confirms that such proceedings based on this patent have not been brought and are not envisaged." (Emphasis in the letter)

9. The board notes that the difference between "will not make" and "have not been brought and are not envisaged" is such that the appellant has declined to give a clear and unequivocal statement of intent which would remove the threat perceived by the respondent. Had such an unequivocal statement been given, that would have resolved the matter without more. As it is, the absence of such a statement together with the absence of any rebuttal of the respondent's second (but primary) argument means that there is no direct answer to the respondent's prima facie case. Its request for acceleration of the proceedings will therefore be allowed.

10. The appellant has also made a general submission that none of the respondent's reasons come close to any of the scenarios in the Notice. The board disagrees. The scenarios mentioned in the Notice are quite clearly stated as given "by way of example" (see the opening words of the fourth paragraph on page 63). Acceleration is thus not limited to those exemplified situations and is a matter to be decided in the discretion of the board on the particular facts of the case before it.

11. Further, the Notice states (see last paragraph on page 63):

"By way of exception, the board may accelerate the procedure ex officio, for example in view of the disadvantages which could ensue from the suspensive effect of the appeal of the case in question."

It appears that, in the case brought by the appellant referred to above, the Belgian Supreme Court attributed the approach of the Belgian courts relied on by the respondent specifically to the suspensive effect. The respondent has thus demonstrated, by reference to that approach and the appellant's prior conduct, a disadvantage which could ensue from that effect and, if the board could allow acceleration on that basis of its own motion, it may clearly do so on the request of a party.

12. The same conclusion applies in the co-pending appeal T 895/13 in which the same parties are also appellant and respondent, the respondent has made the same request, the board has sent the same previous communication, and the appellant has made the same answer. The board adds that its views relate only to the particular facts of these present cases and are not intended to set any precedent for application beyond those facts.