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Astrazeneca and Shionogi v Resolution, Court of Appeal the Hague, the Netherlands, 16 February 2016, Case no. 200.174.337/01, with thanks to Willem Hoyng, Jeroen den Hartog en Judith Krens, HOYNG ROKH MONEGIER, for sending in the judgment and translation in English

Scope of protection. The patent (SPC) in suit relates to a new active substanse (rouvastatin). The main claim of the patent reads: “[rouvastatin] acid or a or a non-toxic pharmaceutically acceptable salt thereof.” The description contains a definition of such salts, including a list of examples. Resolution argued that the definition and list contained in the description should limit the scope of the claims. As a result of this, Resolutions’ product (which contains zinc and is not mentioned in the list), would not infringe the SPC.

The Court of Appeal disagrees and ruled that in view of the description considered as a whole, taking into account his general professional knowledge on the priority date, the average skilled person will understand that the invention pertains to a new group of statins. The notion that finding a suitable precursor (salt form) is the inventive idea underlying the wording of the claim(s) in view of the Court of Appeal cannot be accepted as correct. The definition of “or a non-toxic pharmaceutically acceptable salt thereof” in the description should therefore not lead to a narrow interpretation:

“The Court of Appeal does not accept as correct that if and as soon as a patent contains a further description of a term used in a patent claim, this must always be taken to be restrictive, as Resolution appears to assume. Although this further description must be taken into account as part of the description in interpreting the patent claim, this is without prejudice to the fact that the question regarding whether such description must be taken to be restrictive depends on the question of how the average skilled person would understand this further description, taking into account the description and his general professional knowledge on the priority date.

“Just as the literal meaning of the words of the claim may not simply be started from in interpreting this claim, the literal text of a passage from that description may not simply be started from in interpreting this claim in light of the description. A passage from the description that is relevant for the interpretation of a claim must likewise be interpreted in the context of the entire description and from the perspective of the average skilled person with his general professional knowledge on the priority date. Only if the average skilled person takes a further description (or ‘definition’) to be an exhaustive list, is this a decisive factor for the meaning of the feature of the claim to which this further description or definition pertains.”

The Court of Appeal concludes that the average skilled person did not have valid reasons to assume that the patent proprietor wanted to limit his patent to the salts for use with rosuvastatin mentioned in the description and in so doing wanted to waive part of the protection to which he was entitled by virtue of the literal wording of claim 1.

Reasonable legal certainty does not object to this interpretation of the claim. On the contrary: “the reasonable protection for the patent proprietor would be at issue if despite the (much) broader inventive idea, the claim would be interpreted in the more limited sense advocated by Resolution.”

Read the decision (in Dutch) here.
Read the decision (in English) here.