FINLAND Trends and Developments Contributed by: Rainer Hilli, Mikael Segercrantz, Johanna Lilja and Johanna Flythström, Roschier
circumstances of the case to avoid or minimise the damage, even if the patent on the basis of which those measures were imposed has subse- quently been invalidated. The CJEU noted it had also expressly stated in Bayer Pharma that such legislation is compatible with Article 9(7) only on condition that the court is able to take account of all the circumstances of the case in arriving at a possible refusal of compensation. Consequently, the court noted that it cannot be inferred from the Bayer Pharma judgment that Article 9(7) would provide for compensation for the defendant’s damage only where the appli- cant for provisional measures is at fault, but the court’s intention in Bayer Pharma was merely to remind the national courts that they must assess the specific circumstances of the case in order to determine whether the applicant should be ordered to pay the defendant compensation, which must be “appropriate” – that is to say, justified in the light of those circumstances. As a consequence, the CJEU restated its find- ings in Bayer Pharma : the CJEU stressed that, although national courts’ possibility of award- ing damages is strictly limited to the conditions laid down in Article 9(7) of the Directive, the fact that those conditions are satisfied in a particu- lar case does not mean that the national courts must automatically and in any event order the applicant to compensate the defendant for the damage caused by those measures. It follows from this that member states must ensure that the national courts are able to take account of all the circumstances of the case before them, including the proceedings of the parties, irre- spective of which type of liability regime has been adopted, when transposing Article 9(7) into national legislation. The CJEU pointed out that a strict liability-based damages regime does not limit the right-holder’s ability to act as such, but
strikes a balance between the protection of IP rights and the rights of the defendant (ie, does not necessarily undermine this balance). The Market Court has not yet rendered a judg- ment where that of the CJEU would have been applied. PI Proceedings/Actions Based on Patent Application The question of what rights a patent provides pre-grant (ie, so-called provisional protection) was considered by the Finnish Market Court in a matter concerning Novartis’ blockbuster drug Gilenya®. On 10 March 2022, the Market Court granted a temporary PI on an ex parte basis against Mylan and Teva, based on Novartis’ European Patent application, the claims of which had been published by the Finnish PTO but not yet granted. After the inter partes hear- ing, on 7 April 2022 the Market Court rejected the application for a PI and revoked the tempo- rary decision. Based on the wording of the law, the Market Court concluded that the provisional protection does not provide an enforceable right, and therefore Novartis had not established that it had a claim against the generic companies. The Supreme Court did not grant a leave to appeal to Novartis, and the decision is thus final. PI Proceedings/Forfeiture of Right to Claim Damages On 16 December 2023, the Market Court ruled in an interim decision (Krka v Gilead) on the ques- tion of when the right to claim damages and expenses due to an unnecessary PI has been forfeited. According to Chapter 7, Section 12 of the Code of Judicial Procedure (CJP), an action for compensation of damages and expenses should, under threat of forfeiture of the right of action, be brought within one year of the date on which the precautionary measure was cancelled.
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