Novartis filed a patent application, IL 195087, which was eventually allowed and published for opposition purposes on 31 October 2012. Unipharm filed such an Opposition on 3 January 2013, and claims and counter-claims were exchanged. On 2 October 2013, the director of Unipharm, Zebulun Tomer, filed an affidavit.
In response, and in consequence of the nature and contents of this evidence, on 26 November 2013, Unipharm requested that the opposition be thrown out.
Novartis, represented by Luzzatto et Luzzatto, claimed that Unpiharm was misusing the patent opposition procedure by filing a response to the Counter-Statement of Case in the guise of a submission of evidence. As an alternative position, the Applicant was willing to accept that the Evidence be deleted.
In response, the Patent Office noted that courts allow cases to be thrown out in exceptional circumstances, such as Appeal 693/82 Shemesh vs. The Land Registry P.D. 40(2) 668, 671-672 (1986). Similarly, the Patent Office is willing to throw a case out only in extreme cases (See then Deputy Commissioner Axelrod in 122161, 122162, 122118. Warner Lambert Co. vs. Unipharm, 14 May 2001 :if in a regular Civil dispute, throwing a case out is an extreme measure, how much more so in patent oppositions”. This is particularly the case with patents, since there is a public interest that the patent register remains clean. Essentially, frivolous law suits without a chance of success may be thrown out in early stages, but once the case has started, the sides deserve their day in court. In Warner Lambert, Unipharm didn’t bother filing an affidavit, and the case wasn’t thrown out, so it seems clear that in the present case, where there was an affidavit, albeit arguably a problematic one, clearly there wasn’t sufficient grounds to throw out the case.
With reference to the specific case, the Affidavit seemed top follow the original Statement of Case and didn’t seem to be a widening of the grounds for opposition. Novartis failed to explain why they considered it unacceptable.
The request to throw out the case was thrown out, and the Novartis and costs of 5000 Shekels were awarded to Unipharm.
Whilst there are some patent oppositions that are filed for economical reasons where sometimes there may be minimal legal justification, Unipharm has a strong track record of successfully opposing patents and voiding issued patents. we watch developments with interest.