Prominence Given To The Preservation Of The Status Quo

• Published date: 10 May 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: HGF Ltd
• Author: Mr Akvile Lukauskaite, Rachel Fetches and Christie Batty

The Court of Appeal has stayed an interim injunction to allow Mylan's generic to remain on the market in a bid to preserve the status quo, despite recognising that damages could be an inadequate remedy for Neurim, if Mylan is infringing its patent.

This is the latest instalment in a series of decisions between Neurim Pharmaceuticals (1991) Ltd & Anor ("Neurim") and Generics (UK) Ltd & Anor (t/a "Mylan"). Neurim exclusively licensed EP1441702 (the "Parent") to Flynn Pharma who market Circadin, a drug which treats insomnia. The Parent has been subject to the following back and forth between the EPO and Court:

20 November 2019

The Opposition Division held that the Parent lacked novelty and revoked it. Revocation was suspended when Neurim appealed.

14 February 2020

Neurim brought an infringement claim in the Patents Court.

02 March 2020

Neurim applied for an interim injunction in the Patents Court to restrain Mylan from launching a generic version of Circadin. The injunction was refused but directions were given for an expedited trial.

24 June 2020

Neurim appealed the interim injunction decision. The Court of Appeal refused the appeal on grounds that Neurim would be adequately compensated by an award of damages for losses suffered by it as a result of any infringing acts before the expedited trial.

04 December 2020

The Patents Court held that the Parent (as proposed to be amended) was valid and had been infringed.

18 December 2020

Board of Appeal orally announced that the Parent was invalid for insufficiency. The Parent was revoked when Neurim withdrew its appeal.

This particular decision relates to Neurim's EP3103443 (the "Divisional"), whose claims are patentably indistinct from the Parent (as amended).

On 10 February 2022 the Patents Court found Mylan had infringed the (valid) Divisional on the papers. This decision was followed by an oral hearing where the Court maintained its reasoning. Therefore, Neurim was granted an injunction to restrain Mylan from infringing. Clearly, the Court did not follow the Board of Appeal's insufficiency findings in relation to the identical Parent (nor is it required to).

The Court of Appeal granted Mylan permission to appeal. Expedition was deemed appropriate in light of the Divisional's...