New Decision: Higher Regional Court Düsseldorf on Second Medical Use Patents

By Oliver Jan Jüngst, Anna Wolters-Höhne, Annika Lückemann


In 2017, the Higher Regional Court Düsseldorf first iterated new liability criteria with respect to Second Medical Use Patents (cf. decision Östrogenblocker of 5 May 2017, docket no. I-2 W 6/17). Accordingly, infringement could also be assumed apart from the conventional “purposeful preparation” situation (in German: “sinnfälliges Herrichten”). In its latest decision of 9 January 2019, the Higher Regional Court Düsseldorf confirmed the criteria it had developed and provided some insight as to how these should be interpreted (docket no. I-2 U 27/18). Against this backdrop, Bird & Bird was successful in fighting a complaint against its client, which was dismissed both in first instance and now also on appeal.

The “new” liability criteria

Under the “new” criteria by the Düsseldorf Courts, infringement of a second medical use claim can not only be assumed in case of a “purposeful preparation”. Rather, infringement is also possible under the following criteria:

  1. Suitability of the product for the patented use
  2. Exploiting of circumstances in a way that a use according to the patent occurs.

For this the following is necessary:

  1. Sufficient, not mere singular use according to the patent
  2. Knowledge or ignorance against good faith

Background and Decision

These criteria have been discussed internationally, such as lately in the UK Supreme Court decision in re Pregabalin. They were developed by the Higher Regional Court Düsseldorf in preliminary injunction proceedings (cf. docket no. I-2 W 6/17), preceding the main proceedings that now led to the decision of the Higher Regional Court Düsseldorf. As said request for a preliminary injunction was dismissed due to lack of (timely) urgency, patentee initiated an action on the merits before the Regional Court Düsseldorf.

Plaintiff, the patentee, sued several generics companies, one of which was defended by Bird & Bird (as already in the preliminary injunction proceedings). The case concerns a patent claiming the use of a compound in the treatment of breast cancer. The Higher Regional Court Düsseldorf applied a narrow understanding to the patent, which was indicated by the claim language and the description and which was in line with the previous EPO-decision confirming validity.

In its decision that was issued on 9 January 2019, the Higher Regional Court confirmed the applicability of the “new” liability criteria. However, Plaintiff was not able to show that infringement actually occurred in a sufficient scope. Already in first instance, the Regional Court Düsseldorf had dismissed the complaint for this reason (judgment of 5 July 2018, docket no. 4c O 46/17). This decision was now confirmed on appeal.

Guidelines that can be taken from the new decision

In its ruling, the Higher Regional Court provided the following, more general guidelines:

  • Relevance of subjective criterion: Just like in cases of a purposeful preparation, it is not necessary that the actual use is only or almost only the patented use. It is rather decisive

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