UPC LD Munich revokes Sanofi's cabazitaxel patent for lack of intensive step applying the UPC CoA intentive step test

On 2 July, the Court of Appeal of the UPC (“CoA”) handed down its decision in the PI proceedings between Guardant Health, Inc. (“Guardant”) and Sophia Genetics SA et al. (“Sophia”). Both parties appealed the decision of the Local Division Paris (“LD Paris”) of 23 January 2026. Although Guardant successfully objected to the finding that the patent was likely invalid for added matter, the CoA held that the urgency requirement was not met and therefore no PI was granted. What preceded Guardant is the proprietor of EP 3 443 066 (“EP 066”), which claims a method for detecting the presence or absence of colorectal, ovarian, lung or pancreatic cancer. EP 066 was granted on 2 October 2024 and claims priority of 14 and 18 April 2016. No opposition was filed. In addition to its UPC designation, EP 066 is in force in CH, ES and the UK. Sophia offers the MSK-DDM test in the UPC territories, CH, ES and NO. On 27 May 2025, Guardant sent a warning letter to Sophia arguing that the MSK-DDM test falls within the scope of several patents, but not mentioning EP 066. Sophia replied on 20 June 2025. On 14 July 2025, Guardant started litigation in the UK for infringement of the UK parts of several patents, including EP 066. It lodged its reasons on 18 August 2025. On 29 August 2025, Guardant applied for a PI before the LD Paris for the alleged infringement of several patents, including EP 066. The LD Paris held that the urgency requirement was met, but that EP 066 was likely to be invalid for reasons of added matter and therefore rejected a PI. Guardant appealed the order regarding EP 066 and costs; Sophia lodged a cross-appeal. Assessment of the CoA – urgency The CoA held that the assessment of unreasonable delay depends on the circumstances of the individual case. The decisive point in time is when the applicant has, or should have had, after exercising due diligence, the necessary facts and evidence. The burden of proof rests on the applicant. The CoA found that Guardant acted with unreasonable delay based on the following five principles: 1) A patent holder is not obliged to assert all patents in one application for a PI. If a patent holder has the necessary information for some, but not all patents, delaying the filing until it has information regarding all patents may constitute unreasonable delay. The CoA considers it compatible with procedural efficiency and the frontloaded system to file multiple separate applications weeks apart before the same division, since asserting multiple patents in a single application carries the risk that a prompt decision cannot be expected. 2) If a patent holder is aware, on the basis of a certain document, that one or more of its patents have been infringed, it must not turn a blind eye to the fact that the document also indicates the infringement of its other patents. The fact that the warning letter did not concern EP 066 does not justify the conclusion that Guardant was unaware of the infringement of EP 066. 3) While a patentee is generally not obliged to monitor the market, it must investigate the market with due diligence once it becomes aware of specific circumstances suggesting infringement. As soon as Guardant was aware of infringing activities in the UK, it was expected to investigate whether infringement occurred in the UPC territory, CH and ES. 4) For legal entities, the decisive factor is when the authorised representative body or an individual capable of pursuing the infringement internally becomes aware of the possible infringement (e.g. an employee of the legal department or a senior member of the sales department). The fact that other employees attended Sophia’s online seminars is insufficient, as they were not involved in evaluating potential patent infringement claims and had no obligation to forward information to decision makers. 5) As a general rule, a patent holder may wait a reasonable time for a response to a warning letter before drafting and lodging an application for a PI. However, since the warning letter did not concern EP 066, there was no reason for Guardant to wait for Sophia’s response before drafting an application regarding EP 066. Based on a certain document, the CoA concludes that Guardant (should have) had knowledge of the alleged infringement of the MSK-DDM test by 1 May. All information Guardant further relied upon was publicly available, requiring no substantial investigative measures. A diligent patentee could have completed this inquiry within two weeks, making 15 May 2025 the latest date on which Guardant should have been aware of the infringement in the UPC territory, CH and ES. Therefore, leaving a three-months’ gap from 15 May 2025 until 29 August 2025 for submitting the PI application, while Guardant stated it needed two weeks for drafting, is unreasonable. The patent’s complexity, technical tests and expert consultation do not justify the delay: Guardant failed to specify when the analyses began, for which patents they were essential, their duration or why the delay was reasonable. Even assuming the tests took a month, a two-months delay remained unaccounted for. Conclusion This decision provides a comprehensive guidance on urgency required for PIs in the UPC. The CoA establishes that a patentee: 1) need not assert all patents in one application and must not delay filing once it has sufficient information for some; 2) must not ignore infringement of other patents indicated in a document it has reviewed; 3) must investigate infringement in other designated territories once aware of infringement in one; 4) is deemed aware only when the authorised representative body or an individual capable of pursuing the infringement internally becomes aware of it and 5) may wait for a response to a warning letter, but not if that letter did not concern the patent at issue. As Guardant failed to meet these principles, no PI was granted.

On 24 December 2025, the Council of State (the highest administrative body in NL, hereafter: “Council”) issued its judgment in the administrative appeal proceedings between the Dutch Medicines Evaluation Board (‘‘CBG’’) and several generic companies incl. Laboratorios Cinfa S.A. (‘‘Cinfa’’) against Organon N.V. (‘‘Organon’’). The case concerns fixed-dose combination (“FDC”) products containing ezetimibe and atorvastatin and the use of the simplified procedure for obtaining a marketing authorisation (“MA”) based on Art. 10(b) of Directive 2001/83 (the “Directive”). In the NL version of the Directive, Art. 10(b) is article is referred to as Art. 10ter). The Council stayed the proceedings and referred two preliminary questions to the Court of Justice of the European Union (“CJEU”). The answers to these questions are particularly important, as they may determine whether Art. 10(b) of the Directive can be relied on more than once for the same FDC, allowing subsequent applicants to obtain an MA without submitting a full dossier on the mono products and instead to provide new data only on the FDC itself. What preceded Cinfa applied in NL for several MAs for FDC products containing ezetimibe and atorvastatin. The CBG granted these MAs under the simplified requirements of Art. 10(b) of the Directive. For the same combination, the CBG had already granted an MA to Organon for its product Atozet. This MA was also based on the Art. 10(b) procedure. Both Organon and Cinfa submitted their own dossier for the FDC, relying on the existing mono product dossiers for the respective individual active substances, which were no longer protected by data/market exclusivity. Furthermore, the indications do not fully overlap. Cinfa’s products are indicated as a substitution therapy. Organon objected to the MAs granted to Cinfa. The CBG dismissed Organon’s objections. Organon therefore appealed to Administrative Division of the District Court of Noord Holland (the “Court”). The Court held that the MAs for Cinfa’s FDC could not lawfully be granted using the Art. 10(b) procedure. In the Court’s view, ezetimibe and atorvastatin had already been combined “for therapeutic purposes” in Atozet. On a literal reading, Art. 10(b) only applies where the active substances “have not hitherto been used in combination for therapeutic purposes”. Once an FDC has been authorised under Art. 10(b), thesame combination can therefore no longer benefit fromthat simplified route. Both the CBG and Cinfa appealed to the Council. Interpretation of Article 10 (b) Directive 2001/83 The Council notes that Art. 10(b) offers a simplified route for FDCs where each active substance is already authorised as a mono product and its data exclusivity has expired. The applicant may rely on the existing mono product dossiers and only has to provide new preclinical and/or clinical data for the combination product itself. The Council states that the primary objective of the Directive is the protection of public health, while it also aims to avoid unnecessary repetition of animal/human testing, but also to create an environment that does not unduly hinder pharmaceutical innovation and competition. The Council points out that the phrase “have not hitherto been used in combination for therapeutic purposes” could be read as implying that only the first FDC of particular active substances may rely on Art. 10(b). Thus, once an MA has been granted under Art. 10(b) for a given combination, subsequent applicants for the same combination would be excluded from using this provision. However, the Council observes that this textual reading does not fully align with the objectives and structure of the Directive. In regulatory practice, a substantial majority of Member States allow multiple Art. 10(b) MAs for the same combination, provided each applicant submits its own dossier for the FDC and does not rely on data still under protection. The CMDh has endorsed this approach, and the European Commission has, in several opinions and a 2022 letter, taken the position that multiple Art. 10(b) applications for the same combination are not excluded as long as regulatory data protection is respected. The Council also refers to the decision of the Spanish ‘Tribunal Supremo’, which held that neither national nor EU law precludes repeated use of Art. 10(b) for the same combination, and notes that similar litigation is pending in France. In view of the divergent national case law and administrative practice, the Council concludes that the interpretation of Art. 10(b) is not an acte clair and that there is a risk of inconsistent application across the EU. The preliminary questions to the CJEU To ensure a uniform interpretation of Art. 10(b), the Council refers two questions to the CJEU: 1. Whether Art. 10(b) of the Directive must be  nterpreted as allowing a subsequent MA for the same FDC of active substances to be granted under that provision, even where an earlier MA for that combination has already been granted using Art. 10(b)? 2. Whether, when answering the first question, it is relevant that the subsequent combination product is applied for with a different therapeutic indication from that of the earlier combination product – i.e. whether a different indication implies a different “therapeutic purpose” within the meaning of Art. 10(b)? Conclusion The forthcoming CJEU judgment will clarify whether Art. 10(b) can be relied on more than once for the same FDC and whether differences in therapeutic indications are relevant for that assessment. The outcome will clarify the way to go forward with MA applications for FDC products by using the Art 10(b) route, a full-dossier application or a belated generic application.

On 18 December 2026 the Provisions Judge of the District Court of The Hague (“Provisions Judge”) rendered his decision in the PI proceedings initiated by Newron Pharmaceuticals S.p.A. (“Newron”) & Zambon S.p.A (“Zambon”) against Vivanta Generics S.R.O. (“Vivanta”). According to the preliminary opinion of the Provisions Judge, the Dutch SPC for safinamide, based on EP 1 613 296 (“EP 296”), meets the requirement of Art. 3(a) of Regulation 469/2009 (“SPC Reg.”). A preliminary injunction (“PI”) is granted. What preceded Newron was the proprietor of EP 296 entitled “Methods for treatment of Parkinson’s disease.” It claimed the use of safinamide in combination with levodopa/PDI for treating Parkinson’s disease by way of Swiss-type claim. The patent expired on 8 April 2024. The Dutch Patent Office granted SPC no. 300752 (“SPC”), which will expire on 7 April 2029. Newron’s medicinal product is marketed under the brand name ‘Xadago’. Zambon is Newron’s exclusive licensee in the Netherlands. On 7 April 2025, Vivanta obtained two marketing authorisations (‘‘MAs’’) in the Netherlands for its generic safinamide products (“the Products”). The Products were listed in the pricelist (”G-Standaard”) for November 2025, published on 27 October 2025. On 3 November 2025 Newron c.s. initiated PI proceedings, the oral hearing was held on 6 November 2025. Article 3(a) SPC Reg. – product protected by patent. The dispute focused on the requirement of Art. 3(a) of the SPC Reg. Parties agreed that Newron’s SPC meets the criteria of Art. 3(b-d) SPC Reg. Vivanta argued that EP 296 does not protect safinamide as such, but only the combined administration of safinamide with levodopa/PDI. Since the SPC has been granted for the single active ingredient safinamide, the SPC product falls outside the invention. In support of this, Vivanta in par. 4.16 referred to CJEU case law (Medeva and Yeda), where the Court of Justice held that Art. 3(a) precludes grant of an SPC for ingredient A when the basic patent claims only a combination A+B. In paras 4.18-19 the Provisions Judge rejects this argument. He applies the two-step test developed by the CJEU in Teva/Gilead (confirmed in Teva/MSD and MSD/Clonmel). A product is protected by a basic patent under Art. 3(a) of the SPC Reg. if two cumulative criteria are met: (i) from the perspective of the person skilled in the art and in light of the description and drawings, the product necessarily falls under the invention for which the patent was granted, and (ii) the product is either expressly mentioned in the claims or can be specifically identified by the skilled person based on all information disclosed in the patent in combination with the state of the art at the filing or priority date. As to the first step, the Provisions Judge holds that, correctly construed, claim 1 of EP 296 does not claim a combination product comprising both safinamide and levodopa/PDI, but a further medical use of safinamide as an add-on therapy in patients already on a stable levodopa/PDI regimen. Claim 1 is drafted as a Swiss-type claim, which entails that it is claiming a second or further medical application/use of a known medical product. For the second step, the Provisions Judge holds that safinamide is expressly identified in claim 1 and throughout EP 296 the focus is on the active safinamide. The product underlying the SPC is safinamide, which is also the sole active ingredient in Xadago according to the MA. Levodopa/PDI are not active ingredients of the Xadago product itself. Discussing the arguments of Vivanta, the Provisions Judge considers in par. 4.22 that while Santen overruled the Neurim approach to Art. 3, it reaffirmed that the SPC Reg. is not limited to entirely new active ingredients and that a new method of obtaining a product or a new application of a product may also be protected by a certificate, provided that the product has not previously been the subject of an MA as a medicinal product. As is the case here. The Provisions Judge rejects Vivanta’s argument based on Medeva and Yeda, as the situation in these cases was very different. In both cases, the independent claims related to combination products (A+B), whereas in the present case claim 1 concerns only one component (A). The Provisions Judge finds that both steps of the Teva/Gilead test are met and that safinamide is protected by EP 296 for the purposes of Article 3(a) SPC Reg. Therefore, the Provisions Judge holds the present SPC preliminary valid. Other jurisdictions According to the Provisions Judge (par. 4.24), the SPC applications relating to safinamide have been refused in the UK, Finland and Sweden. These cases concerned SPC applications that were defined as a combination of safinamide and levodopa/PDI, creating a discussion on Art. 3(b) instead of Art. 3(a). In Germany the SPC is also refused on the basis of Art. 3(a) (appeal pending). Conclusion As the Provisions Judge holds the SPC valid, the inclusion of Vivanta’s Products in the G-Standaard constitutes infringement within the meaning of Art. 53 Dutch Patent Act. Therefore, a PI is granted.

On 1 October 2025, the District Court of The Hague (“Court”) handed down its decision in the accelerated final relief proceedings between Samsung Bioepis NL B.V. (“SB”) and Regeneron Pharmaceuticals, Inc. (“Regeneron”). The Court dismissed SB’s revocation action against the NL part of EP 2 364 691 (“EP 691”) and the NL part of EP 2 944 306 (“EP 306”) and denied the requested Arrow declarations. The Court held that SB’s aflibercept biosimilar (Opuviz) infringes EP 691. It maintained EP 306 in amended form. What preceded Regeneron holds EP 691 and EP 306, which are divisionals of EP 2 209 103. Both patents are entitled: “VEGF antagonist formulations suitable for intravitreal administration”. The medicinal product of Regeneron is marketed under the brand name ‘Eylea’. Eylea is used in the treatment of, amongst others, wet Age-related Macular Degeneration (wAMD). On 13 January 2025, the Opposition Division of the EPO invalidated EP 306, holding that EP 306 was not entitled to priority and contained added matter. Regeneron appealed. In the appeal proceedings Regeneron relied, in its Main Request, on one single claim. No opposition was filed against EP 691. SB started two revocation actions before the Court claiming that both patents are invalid due to added matter, lack of novelty and lack of inventive step based on several prior art documents. It also contested that the patents can claim priority based on US 484. In each case, SB also requested an Arrow declaration. Regeneron filed a counterclaim for infringement of the NL part of EP 691. Moreover, it requested the Court to grant an injunction in all designated states of EP 691 (excluding UK and DE) based on the alleged threat of unlawful acts performed by SB. The decision Added matter and priority In the combined proceedings, the Court rejected SB’s arguments and held that, based on common general knowledge, both US 484 and the applications for EP 691 and EP 306 provide a clear and direct basis for combining aflibercept with the excipients in the claimed amounts or ranges. The formulations were disclosed directly and unambiguously in US 484 and in the applications, including those claims or parts referring to the mature sequence (‘’consisting of”), the sodium phosphate buffer, and the pre-filled syringe. Novelty The Court notes that the skilled person would understand that intravitreal use requires an isotonic formulation. In contrast, the prior art (WO 852 and Fraser) only disclose hypertone formulations, whereas WO 650 does not disclose intravitreal use. Thus, none of these documents discloses directly and unambiguously claims 1 and 6 of EP 691. Therefore, the Court finds EP 691 novel. Inventive step The Court rejects SB’s invalidity arguments regarding inventive step. Based on the common general knowledge a skilled person could have arrived at the formulation claimed in EP 691 on the basis of US 234. However, SB has not sufficiently demonstrated that he would have done so without inventive labour, because he had a reasonable expectation of success. The Court states that there is no try-and-see situation applicable under these circumstances. Infringement of claim 6 The Court finds that claim 6 of EP 691 is infringed. In reaching this conclusion, the Court relies on Regeneron’s expert evidence, including the CEPTER report, which demonstrates that SB’s product corresponds to the claimed aflibercept composition. SB did not submit any experimental data nor did it provide samples to contradict these findings. Unlawful acts of SB Regeneron also requested an injunction in all designated states of EP 691 (excluding UK and DE) as it considers it likely that SB will grant third parties in all designated states the right to use SB’s marketing authorisation (“MA”) for Opuviz. The Court finds it has jurisdiction to hear such claim under article 4 of the Brussels I bis Regulation, but dismisses the request as Regeneron insufficiently substantiated which third parties threaten to make use of the MA of SB in which countries. Other jurisdictions The Court notes that there are ongoing proceedings relating to these (or related) patents in: DE, UK, SK and the US. The proceedings in DE focused on the validity of EP 691. Shortly after the Court handed down its decision on 1 October, the UK High Court rendered its judgement on 8 October in the parallel revocation action filed by Formycon and SB UK. The High Court held that EP 306 was not entitled to priority and thus invalid for added matter. EP 691 was maintained but in an amended form. Contrary to the NL decision, the High Court found that there was no infringement. The UK decision also mentions that there are parallel proceedings in FR, IT, BE and CA. Conclusion The Court holds the NL part of EP 691 valid and infringed. Furthermore, the Court maintained the NL part of EP 306 in amended form.

On 10 September 2025, the District Court of The Hague (“Court”) rendered its decision in the accelerated final relief proceedings between Samsung Bioepis UK Ltd. (“SB”) and Janssen Biotech Inc. (“Janssen”). The Court dismissed SB’s revocation action and upheld the NL part of EP 3 883 606 (“EP 606”) containing a second medical use of the active ingredient ustekinumab (marketed as Stelara). What preceded This case follows earlier litigation in the Netherlands regarding the basic patent EP 1 309 692 (‘’EP 692”) and its SPC related to ustekinumab. In January 2024, the Provisions Judge of the District Court, denied Janssen a PI against SB. SB could benefit from the SPC Manufacturing Waiver for the production and stockpiling for export of its biosimilar products. This decision was confirmed by the Court of Appeal in February 2025 (see our Pharma Updates of 31 January 2024 and 19 February 2025). Both EP 692 and its SPC are now expired and the current dispute focuses only on EP 606. Janssen markets ustekinumab under the brand name ‘Stelara’ for various immune-mediated inflammatory diseases, including psoriasis, psoriatic arthritis, Crohn’s disease, and, since 2019, ulcerative colitis (“UC”). Janssen obtained EP 606 as a second medical use patent for the treatment of UC. SB started a revocation action claiming EP 606 is invalid due to lack of novelty, lack of inventive step and insufficiency of disclosure. Furthermore, SB argued that, with regard to claim feature 2.5, Janssen cannot claim priority on the basis of priority documents (P1, P2, P3). In the proceedings Janssen solely relies on priority documents P2 and P3. The decision Priority documents P2 and P3 – claim interpretation The Court held that Janssen can rely on the priority document P2 because “week 0” in claim feature 2.5 must be understood as the start of the maintenance phase of the UNIFI study, and that CSFCR (corticosteroid-free clinical remission) must be achieved at week 44, and not merely before week 44, as SB contended. The Court also clarified that based on the interpretation by the person skilled in the art, claim feature 2.5 does not require a specific level of statistical significance. It further notes that parties no longer disagree that claim feature 2.5 is not limited to patients who were on corticosteroids at the start of the study. Novelty SB further argued that EP 606 lacked novelty based on the UNIFI Protocol, the Ochsenkühn Abstract and Poster, and the Sands Abstract and Slides, or alternatively due to public prior use. The Court does not follow SB’s reasoning and rejects the arguments. None of the cited documents directly and unambiguously discloses claim feature 2.5; inherent disclosure is insufficient for novelty. Inventive step SB presented numerous inventive step attacks. It argued lack of inventive step based on the UNIFI Protocol (or in combination with the common general knowledge), the Ochsenkühn Abstract and Poster, and the Sands Abstract and Slides. The Court applied the PSA regarding inventive step. The Court emphasised that inventive step is only lacking if the skilled person in the art, starting from the prior art, would have had a reasonable expectation of success in solving the problem; a mere hope to succeed or the fact that a trial/study was “obvious to try” is insufficient. The threshold for a reasonable expectation of success depends on: i) the complexity and duration of the research and ii) the complexity of the technical problem to be solved. The Court also addressed SB’s reliance on a recent TBA decision (T1941/21). From that decision follows that clinical trials are usually initiated on the basis of encouraging results from preclinical experiments. Thus, the announcement of a Phase II trial may provide a skilled person with a reasonable expectation of success. According to the Court this needs to be assessed on a case-by-case basis. In assessing the specific circumstances of this case, the Court held that the prior art did not provide a reasonable expectation of success. In this case the threshold is high because of the: high endpoint of the UNIFI study, difficult patient population, and inconsistencies and limitations in the available data. Therefore, the Court held EP 606 inventive. Sufficiency of disclosure SB argued that EP 606 was not sufficiently disclosed. The Court held that these arguments were unfounded. Other jurisdictions The Court notes that there are ongoing proceedings regarding the validity of EP 606 in the UK, Italy and Denmark. On 30 July 2024 the High Court of the UK, rendered its decision in final relief proceedings and found the UK part of EP 606 invalid for lack of inventive step based on the ‘Sands Abstract’ and the ‘Sands Slides’. The Court further points out that in the US parties reached a settlement regarding the market entry of SB. Conclusion Based on its own assessment, the Court holds the NL part of EP 606 valid and dismisses SB’s revocation action.