FINLAND Trends and Developments Contributed by: Rainer Hilli, Mikael Segercrantz, Johanna Lilja and Johanna Flythström, Roschier
The Unified Patent Court The most important development during 2023 and 2024 was the introduction of the Unified Pat- ent Court (UPC). The UPC has a Local Division in Helsinki, with Judge Petri Rinkinen appointed as the presiding judge on a part-time basis. The UPC is located in the same premises in Helsinki as the Finnish Market Court, which handles intel- lectual property (IP) actions in Finland. The first UPC case was filed with the Hel- sinki Local Division on 5 July 2023 (Case ID: 214/2023) in a matter concerning an application for provisional measures (a preliminary injunction (PI) request) and a main infringement action. The provisional measures proceedings progressed in a timely manner with an oral hearing and an oral judgment announced within two-and-a-half months from the filing date. The PI application was dismissed on formal grounds as the court found that the withdrawal of the opt-out con- cerning the patent-in-suit was ineffective, due to the fact that the patent-in-suit had been sub- ject to national litigation in a UPC country and appeal in the matter was pending. The Luxem- bourg Court of Appeals overturned the decision in 2024 and returned the case to the Helsinki Local Division, where the case is still pending. Referrals to the Court of Justice of the European Union The Market Court referred two cases to the Court of Justice of the European Union (CJEU) in order to obtain judgments on the interpreta- tion of the Supplementary Protection Certificate (SPC) Regulation and the Enforcement Directive. SPC Teva has initiated invalidation proceedings in Finland against Merck Sharp & Dohme’s SPC, granted based on the basic patent protecting the active ingredients sitagliptin and metformin,
being the active ingredients of Merck Sharp & Dohme’s product Janumet®. Teva claims that an SPC should not be granted for the combi- nation product sitagliptin/metformin as an SPC has already been granted for the mono product sitagliptin. Merck Sharp & Dohme claims that the “product” definition should have the same meaning throughout Article 3 of Regulation (EC) No 469/2009 (the “SPC Regulation”) and, as the criteria for an SPC under Section 3(a) were met for the combination product, an SPC was validly granted. It is possible to grant more than one SPC based on the same basic patent. On 17 February 2022, the Market Court referred the case (Teva v Merck Sharp & Dohme C-119/22) to the CJEU with questions related to the inter- pretation of Article 3(c) of the SPC Regulation. In a parallel case pending with the Irish Supreme Court, a similar referral (Merck Sharp & Dohme v Clonmel C-149/22) was made to the CJEU, and the cases are being handled jointly by the CJEU. The questions asked by the Market Court are as follows. • What criteria must be applied to determine when a product has not already been granted a supplementary protection certificate within the meaning of Article 3(c) of the SPC Regula- tion? • Must the assessment of the condition set out in Article 3(c) of the SPC Regulation be regarded as being different from the assess- ment of the condition set out in Article 3(a) of that regulation, and if so, in what way? • Must the statements on the interpretation of Article 3(a) of the SPC Regulation in the judg- ments of the court in Case C-121/17 ( Teva UK ) and Case C-650/17 ( Royalty Pharma ) be regarded as relevant to the assessment of the condition in Article 3(c) of the SPC Regulation and, if so, in what way?
139 CHAMBERS.COM
Powered by FlippingBook