Intervention as “amicus curiae” before the Courts of Argentina in patent litigation.

10月 2020

The Argentinian Federal Court has recently confirmed that a third party may not be entitled to intervene as third party at a Court level.

In Actelion Pharmaceuticals v. the Patent Office of Argentina, a local association of laboratories presented a writ, as interested third party, in front of the Court, trying to help or reinforce INPI´s position to reject the corresponding patent.

The Court remembered that the Argentinian law authorizes third parties to participate at an administrative level, but not in front of the Court. Consequently, the judge rejected the third party´s petition and ordered them to pay the costs of this process. Interestingly, in this case, even the INPI rejected the association´s right to participate in the process.   

It is not the first time that an interested party tries it, but the Argentinian Courts already mentioned back in 2015 that this is not possible.

For your reference, we provide below a translation of this resolution.

CIVIL AND COMMERCIAL FEDERAL COURT- III

Buenos Aires, May 20, 2020.

Case n ° 7.083 / 2019/1 / CA1 Appeal in the case of “Actelion Pharmaceuticals LTC v / National Institute of Industrial Property re. patent rejection”. Court 1, Secretariat 2.-

[…]

CONSIDERING:

I. Before analyzing the allegations of the Argentine Chamber of Pharmaceutical Laboratories (CILFA), it is convenient to specify the context in which they were raised:

On September 11, 2006 Actelion Pharmaceuticals LTD (hereinafter, Actelion) applied under Act No. P 06 01 03943 for the patent for a “Stable pharmaceutical composition containing a pyrimidine-sulfamide”.

The National Administration of Patents denied the patent application through Provision PN 057123 of December 12, 2017. Additionally, the National Institute of Industrial Property (INPI) rejected, through Resolution 2019-54-APN-INPI #MPYT of February 8, 2019, the appeal for reconsideration filed by Actelion against that denial (confr. Fs. 221 row., Point IV).

Faced with this, Actelion filed a lawsuit against the INPI with the aim of annulling the aforementioned administrative acts and condemning it to grant the patent in question. He argued that the application met the requirements of inventiveness, clarity and sufficiency in disclosure, so that the resolution should be revoked (fs., 220, point II).

II. 3 months after initiating the lawsuit, CILFA filed a petition, claiming that its intervention be admitted under the terms of article 90, paragraph 1, of the Civil and Commercial Procedure Code Nation. Basically, it argued that the administrative procedure for granting patents for invention cannot be equal to a “classic” process, structured almost exclusively between the interested parties and the administration. It pointed out that patents constitute intellectual property rights that allow third parties to be excluded from carrying out certain acts of exploitation of the patented invention, so that they do not play a passive role in relation to the title granted. Thus, he explained that patents affect the subjective rights and legitimate interests of third parties and impact competition relations, which is why it is necessary to broadly allow third parties to intervene in administrative and judicial procedures related to the granting of patents. He stressed his interest and that of his associates in supporting the INPI’s reasons against the unfair claim of the plaintiff, who seeks to obtain a patent on minor inventions related to macitentan acid which, if granted, will impact the pharmaceutical industry because it will prevent that without its consent, competitors can produce and market specialties that contain it. Finally, it defended the application of Joint Resolution MI 118/2012, MS 546/12 and INPI 107/12 on Patentability Guidelines (confr. Fs. 220 and 649/665 row.).

Both the plaintiff and the defendant opposed the intervention promoted by CILFA (confr. 741/747 row. And 771/783 row.).

III. The judge of the previous instance rejected the approach of CILFA, with an award of costs. To do so, it took into account that CILFA had invoked its interest in upholding the applicability and validity of Joint Resolution MI 118/12, MS 546/12 and INPI 107/12 on New Guidelines for Patenting, but the parties had agreed that said Resolution was not applicable. As this was the case, he understood that the opposition presented by the defendant himself (INPI), whom CILFA intended to support with his participation, had special relevance. He added that the Patent Law granted third parties the powers to challenge the request to be evaluated by the examiner, but it was not its intention to allow them to later freely integrate the judicial procedure[i]. In this context, considering also that CILFA did not even claim to have exercised the aforementioned challenging powers in the administrative process (art. 28 of the Patents Law), it considered that it lacked a legitimate interest in the case to enable its intervention under the terms of the cited article 90 of the Code of Civil and Commercial Procedure of the Nation (fs. 785/786).

IV. CILFA appealed this resolution. It argued that the intervention of third parties is allowed in the Patent Law No. 24,481, in the Administrative Procedure Law No. 19,549 and in the Code of Civil and Commercial Procedure of the Nation. He also emphasized that said institute should be analyzed with a broad criterion when the intervener’s own interest converges with that of INPI. On the other hand, he explained that patents grant an exclusive right that affects competition and collective incidence rights, such as those that refer to public health and the population’s access to medicines; therefore, it concluded that the criteria for evaluating legitimacy should be made more flexible in order to ensure a fair debate on the complex web of interests involved. It also invoked the relevance of the aforementioned Joint Resolution on Patentability Guidelines regardless of the position of the parties in this regard (confr. Fs. 801/817 row.).

When answering the appeal, the plaintiff maintained the criterion adopted in the previous instance in the sense that CILFA’s request be rejected (confr. Fs. 819/831 row.).

V. The facts and arguments of the appellant and the parties in this dispute are substantially similar to those raised and resolved by this Court in case No. 4404/2015/2 / CA1 “Incident of appeal of F HOFFMANN LA ROCHE AG. NATIONAL INSTITUTE OF INDUSTRIAL PROPERTY. INDUSTRIAL CHAMBER OF ARGENTINE PHARMACEUTICAL LABORATORIES (CILFA). BY AUTOS “F HOFFMANN LA ROCHE AG v / INSTITUTO NACIONAL DE LA PROPERTY INDUSTRIAL s / DENIAL OF PATENT”, resolved on November 24, 2016.

It should be noted that the Supreme Court of Justice declared inadmissible the complaint filed by CILFA against the aforementioned ruling by resolution of August 2, 2018; and that the Chamber reiterated the criterion in the pronouncement issued in cases No. 4,230 / 2014/1 / CA1 of December 27, 2016 – whose CILFA complaint was declared inadmissible by the High Court on 8/2/18 -, 4,442 / 2015 / CA1 of March 8, 2018, 4.240 / 2015 / CA1 of June 7, 2018, 9.108 / 2017/1 / CA1 of December 11, 2018 and 1.303 / 2018/1 of April 4, 2019.

Consequently, and without noticing differences in this case that justify departing from the solution adopted there, it corresponds, for reasons of procedural economy, to refer to the grounds set forth in the foregoing, and therefore, to confirm the decision appealed. A copy of the digital protocol will make up this resolution and will be attached to the file.

Therefore, BE IT RESOLVED: to dismiss the appeal of fs. 790 and confirm the decision that appears on fs. 785/786, with an award of the costs of the process (arts. 68, first part, and 69 of the Civil and Commercial Procedure Code of the Nation).

Judges Eduardo Daniel Gottardi and Fernando A. Uriarte are members of the Chamber in accordance with the resolutions of the Court of Superintendency of the Chamber No. 62 and 63 of 2020.


[i] Emphasis is ours.

Pablo Gramajo and Eduardo Zamora, partners at GIRÓ MARTÍNEZ