Possible clearance on its way for seizures in intellectual property right cases

On 9 December 2016, the Dutch Supreme Court in Synthon B.V. v Astellas Pharma Inc. referred questions to the European Court of Justice (ECJ) concerning the rules on the seizure of evidence in Directive 2004/48/EC on the enforcement of intellectual property rights (IPRs) (Enforcement Directive).

Astellas, the owner of a patent related to a sustained-release hydrogel preparation, found various sustained-release tablets on the market (for example, tamsulosine). The tablets’ package leaflets mentioned Synthon as manufacturer. The Court of Arnhem in preliminary relief proceedings granted Astellas permission to seize evidence to prove that Synthon was indeed the manufacturer, on which basis the bailiff seized Synthon’s files and documents.

The current proceedings stem from Astellas’ claim to access the seized files and documents. Once Astellas was granted such access, Synthon appealed to the Court of Appeal which stayed proceedings until the Dutch Supreme Court had answered certain questions raised by it. The Dutch Supreme Court then referred two questions to the ECJ concerning the interpretation of the Enforcement Directive:

• First, does a different criterion apply when access to seized files and documents is requested from an alleged infringer (such as Synthon) as opposed to a third party?

• Second, what criterion has the Court to apply if the defendant argues that the IPR on which the claim to get access is based is not valid, or does no longer exist.

Hopefully the answers of the ECJ will provide guidance to both patent owners and defendants who are confronted with a seizure because of an alleged infringement of IPRs. This is particularly interesting because the Astellas’ patent has now expired.

A prior version of this post was originally published by the same author in Practical Law – Life Sciences, December 2016 Issue (Thomson Reuters).