Global Pharma IP Forum: Novartis questions UPC agreement

A counsel for pharmaceutical company Novartis has said he “embraces” the Unified Patent Court (UPC), but has concerns about securing  preliminary injunctions and the harmonisation of supplementary protection certificates (SPC) under the agreement.

Jürgen Dressel, head of global patent litigation strategy at Novartis, told delegates at the Global Pharma IP Forum in London today, September 28, that the UPC was a logical concept and necessary for the EU to compete with jurisdictions such as China.

He added that overseas companies from the US and Asia are likely to be attracted to it because they “prefer something simple”.

But Dressel said there were issues surrounding what stance the UPC will take on preliminary injunctions, due to differing standards across the EU on the speed of obtaining them.

The UK was cited as a jurisdiction where patent owners can achieve a quick injunction, whereas Italy was noted as a more problematic location.

At the beginning, judges from national courts are likely to carry over “natural tendencies” from litigation in their countries to UPC disputes and grant injunctions in accordance with that approach, Dressel said.

He added that the option of obtaining a pan-European injunction is a “big attraction” for life sciences companies.

Also noted in the discussion was that the UPC agreement does not mention SPCs.

Dressel said there is an “absolute need for harmonisation of the SPC regulation”, but added that any agreement must be made carefully.

He concluded that Novartis is unlikely to register its “crown jewels” as unitary patents immediately due to concerns that they may be invalidated in one court action.

James Horgan, assistant managing counsel for European patents at Merck, said that pharma companies are likely to be quite “reticent” about using the UPC at the beginning, but that they cannot “close to their eyes to it”.

He added that the decision of Italy to join the UPC was “significant” because it is one of the biggest economies in Europe.

The Global Pharma IP Forum is being held today at the London Stock Exchange.