Rituximab – Netherlands

On Sep 27, 2017, Court of Hague issued decision in Rituximab case & revoked Roche/Genentech’s patent EP1951304B1, because it lacks novelty since priority was denied. EP’304 is entitled "Method for Treating Joint Damage". The patent - in short - refers to a use of rituximab in the treatment regimen for joint disease in rheumatoid arthritis (RA).

Celltrion by judgment seeks declaration that defendants are not entitled to enforce the Dutch part of EP’304 against Celltrion & ask to pay the reasonable and proportionate costs of the proceedings. In support of its claim, Celltrion stated that EP’304 is not entitled for priority because inventors have not validated their rights of priority and transferred in time to defendants, thus rendering the Keystone- publication becomes novel harmful state of the art. Defendants argued that the priority right at the time of its creation was automatically transferred on the basis of the agreement between inventors and his employer from 2004. The court must therefore first assess whether the text of the agreement is clear as to the alleged automatic transfer of priority rights.

Celltrion claims that the agreement does not regulate that a priority right automatically passes.  Article 10 of the agreement shows that a separate legal act is required for the transfer of a priority right. Defendants contest that and argue that Articles 4 and 5 show that there is an automatic transfer, in which they rely on an explanation of the agreement in accordance with the parties' intention.

The court after analysing the facts said that the agreement does not contain an explicit provision governing the manner in which priority rights are transferred. Indeed, the term ' priority right' does not appear as such in the agreement. The court rejected the defendant’s argument that the active assignment contained in Article 5 should be considered not only refers to Proprietary Information, but also to priority rights as belonging to the group of patent-related rights.

Now, in the judgment of the court of the agreement, no automatic transition from the priority right derived from inventor can be deduced, and it has not been found that this right is otherwise transferred to one of the defendants in a timely manner. In principle, the priority date will be November 6, 2006. Therefore, based on a priority date of 6 November 2006, Keystone's publication is prior art & thus EP’304 lacks novelty and is revoked.