The Netherlands: New developments in Dutch patent litigation: Evidential Seizure

20 August 2007

Manon Rieger-Jansen

The pharmaceutical company Teva Pharmaceuticals Europe B.V. et al. has won its lawsuit against Abbott Laboratories Inc in the Court of The Hague, The Netherlands (Judgment of 25 July 2007). This is one of the first decisions since the implementation of the Enforcement Directive into Dutch law.

Based on this recently introduced legislation, owners of intellectual property rights have a number of new instruments, such as ex parte proceedings, to preserve evidence of alleged infringements of their intellectual property rights, including evidential seizures. Evidential seizures are now an important weapon for enforcing intellectual property rights and combating infringement and have been used frequently since 1 May 2007. However, this weapon should be treated with a degree of caution.

On the basis of these new provisions, Abbott had levied prejudgment evidential seizures at the premises of Teva asserting that there was an imminent infringement of Abbott’s patent rights. Various documents relating to the alleged imminent infringement were seized and descriptions of the documents made.

In the lawsuit filed by Abbott, Abbott requested that the Court allow it to inspect the seized and described documents, whilst Teva, by way of a counteraction, asked that the Court lift the seizures.

Ruling on several issues, the Court found that the seizures had to be considered unlawful and should be lifted. The Court held that, not only had the seizures been levied in the name of the wrong Abbott entity, but more importantly, although the threshold for the evidence required to instigate evidential seizures was not as high as in ordinary patent infringement (preliminary relief) proceedings, Abbott had not made out a plausible argument that there was a threat of infringement. Abbott only submitted evidence that Teva had applied for marketing authorisations in various countries and was preparing the launch of a generic product, without any evidence that these marketing authorisations were actually going to be used prior to the expiry of Abbott’s patents.

In an important decision, the Court found that it was established case law in The Netherlands that the mere application for a marketing authorisation does not constitute patent infringement. The fact that a marketing authorisation must be used within three years (the so-called ‘sunset’ clause) does not constitute sufficient threat of infringement to justify evidential seizure actions. The Court recognised that it was of the utmost importance to generic manufacturers that they be in a position to enter the market as soon as possible after the relevant patent protection expires.

Finally, the Court held that the seizures had to be lifted as Abbott had failed to institute the “main action” in a timely fashion. Only an infringement action on the merits could be regarded as a main action; preliminary injunction proceedings for inspection of seized documents could not.