On 21 November 2017, the German Federal Patent Court decided about a license fee for the HIV-Drug Isentress for which it has granted a compulsory license in 2016.

Background of the Case

In 2016, Shionogi & Company Ltd, owner of the European Patent EP 1 422 218, accused Merck & Co. of violating this patent by selling the HIV drug Isentress. The drug has been generating worldwide sales of around USD 1.5 billion annually since 2012. Shionogi filed a lawsuit with the Regional Court of Düsseldorf. Merck opposed by applying for a compulsory license with the German Federal Patent Court and also requested a provisional allowance order under section 85 of the German Patent Act. In a preliminary ruling, the German Federal Patent Court ordered Shionogi to grant a compulsory license to Merck & Co. The German Federal Patent Court based its decision on the fact that Merck & Co. had made a license offer to Shionogi for a worldwide license and that there is a substantial public interest due to the paramount importance of the drug for patients with HIV infections – please see our previous post on this decision for more information (https://www.allaboutipblog.com/2016/11/german-federal-patent-court-grants-compulsory-license-on-hiv-drug-patent/). This preliminary ruling was confirmed by the German Federal Court of Justice in July 2017.

The Ruling

The German Federal Patent Court now decided about the amount of the compulsory license fee and held that Merck & Co. has to pay a license fee of 4% on the sales of the drug Isentress. The written reasons for this decision have not yet been published.

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