JUVE Comment

The patent litigation team of this national full-service firm is well positioned in the Dutch patent market. The team is mainly known for assisting generic drug companies such as Stada and Insud in disputes over pharmaceutical and biosimilar drugs. Recently the team played a prominent role in defending core client Mylan against a preliminary injunction from Novartis concerning the multiple sclerosis drug fingolimod. It fought at the side of other generics manufacturers in the Netherlands and other European jurisdictions.

When it comes to litigation, Jaap Bremer and Marleen van den Horst do not only work for generics manufacturers. The team benefits from a sturdy network of international firms, which frequently call on it for the Dutch parts of European disputes. For example, together with Anglo-Canadian firm Gowling, Marleen van den Horst frequently advises InterDigital in the background on potential lawsuits involving SEPs in the Netherlands. But recently the team has not appeared for its most prominent mobile communications client in Dutch courtrooms, due to a lack of litigation in the Netherlands. The firm has showcased its experience in patent proceedings across a broad technical spectrum with work for AMD regarding medical devices.

The team has begun to compete with the market leaders in terms of size, having recently grown by two associates. But given the extensive advisory activities regularly carried out by a full-service firm like BarentsKrans, such as in transactions and licensing deals, further growth would be wise, not least because Jaap Bremer and Marleen van den Horst do not focus solely on litigation. In line with the overall firm’s pronounced M&A specialty, they are very active advising Benelux companies such as a food company on major licensing deals or technology investments.

Strengths

Strong focus on litigation regarding pharma patents, especially for generic drug companies.

European set-up

In pan-European litigation campaigns waged by originators against generic products, for example the Novartis battle over fingolimod, BarentsKrans’ patent team is regularly active in Dutch proceedings for generic drug companies such as Stada or Mylan. The same is true of mobile communications when InterDigital wages battles in the Dutch courts.

For these clients the team relies on a permanent international network. As the UPC is now very likely to launch in early 2023, the BarentsKrans team would do well to work on more exclusive ties to other firms. It might be attractive, for example, for German and French firms with a strong life sciences focus. Selected partnerships with patent teams in key jurisdictions could also help both parties, through joint acquisition activity, to be more attractive for companies when they award cross-border instructions or in future UPC cases.

It is here that the patent teams in national full-service firms like BarentsKrans face tough competition from internationally positioned teams such as Hogan Lovells or Bird & Bird. But like all patent teams in national full-service firms, the BarentsKrans team will have to coordinate with the firm as a whole if it wants to enter into more exclusive cooperations with other European teams. In growing its associate rank the firm has solved one of its more pressing problems, namely that the team was too small to conduct multiple parallel UPC cases. By establishing close ties to patent attorneys experienced in litigation, BarentsKrans now hopes to secure additional flexibility for putting together strong teams for such cases. The firm’s strong client base of generics companies could be some of the first movers at the UPC.

Recommended individuals

Jaap Bremer, Marleen van den Horst

Team

6 lawyers

Specialties

IP advice with a strong focus on patent litigation and life science patents. Arbitration, entitlement actions, licences, R&D agreements and transactions.

Clients

Litigation: Mylan/Viatris (defendant) against Novartis in PI proceedings regarding SPC for multiple sclerosis drug fingolimod (public knowledge); Insud Pharma (claimant) in nullity case against Galenicum’s patent for pharmaceutical compositions for anti-diabetic drug sitagliptin; AMD (defendants) against Corbin regarding medical device; frequent litigation for InterDigital and Stada (both public knowledge). Advice: Neokidney Foundation regarding strategic portfolio management and licence agreements for a portable artificial kidney; Rollepaal on agreements following a dispute regarding patents for tubing technology; Mourik and subsidiaries on licensing transactions with energy companies over renewable energy technology.