[Ip-health] German Federal Patent Court Determines License Fee for a Compulsory License under HIV Drug Patent - 4 percent royalty

James Love james.love at keionline.org
Tue Dec 19 17:33:27 PST 2017

In an important case, a German patent court has decided that Merck will pay
a 4 percent royalty to Shionogi, for a compulsory license on patents on the
sale of Isentress, an HIV drug.  The grounds for the compulsory license
included the public interest in access to the drug by patients living with



German Federal Patent Court Determines License Fee for a Compulsory License
under HIV Drug Patent

By Dr. Ulrich Worm on December 18, 2017
Posted in Germany, Patents, Pharmaceuticals

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 (
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.

James Love.  Knowledge Ecology International
KEI DC tel: +1.202.332.2670, US Mobile: +1.202.361.3040, Geneva Mobile:
+41.76.413.6584, twitter.com/jamie_love

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