The Patent Review 2013 - 2014: Stay pending EPO proceedings: Actavis Group v Pharmacia LLC [2014] EWHC 2265 (Pat), Arnold J.

15 April 2015

Neil Jenkins, Audrey Horton

Pharmacia applied for a stay of UK patent proceedings pending the final determination of parallel proceedings concerning the validity of the same patent before the EPO. Actavis opposed the application.

In support of its application for a stay, Pharmacia had offered undertakings

  • to seek expedition of the EPO proceedings,
  • not to seek an injunction against Actavis or its customers until the determination of the EPO proceedings and
  • only to seek damages of 1% of Actavis’ net sales during the period from launch until the determination of the EPO proceedings if the Patent is held valid both by the EPO and by the English courts.

The principles applicable to an application of this nature had been restated recently by the Court of Appeal in IPCom GmbH & Co KG v HTC Europe Co Ltd.

The Judge at first refused to accede to the application and stay the proceedings. He said that although the competing considerations were finely balanced, in the end, he concluded that they favoured the refusal of a stay. The main reason in favour of his refusal was the fact that the EPO proceedings had only just begun. Even with expedition, it was likely that the EPO proceedings would take at least three years to resolve finally and possibly significantly longer. By contrast, the UK proceedings would be resolved finally in two years. This was therefore a case where the relative timings of the two sets of proceedings meant that commercial certainty was likely to be achieved in relation to the UK market at an earlier date if the UK proceedings were allowed to proceed (IPCom factors 8 and 10).

Refusal of a stay was also supported by the possibility that an English decision might promote a settlement (IPCom 9) and by the public interest in determining the validity of the Patent (IPCom 11). The risk of wasted costs was a factor that favoured the grant of a stay, but this was outweighed by the commercial uncertainty (IPCom 12).

After Judgment had been handed down, Pharmacia offered two additional undertakings in return for the grant of a stay of the UK proceedings, namely

  • not to seek an injunction in the UK against Actavis or its customers in relation to Actavis’ sustained release pramipexole product during the life of the Patent and
  • only to seek damages of 1% of Actavis’ net sales in the UK during the life of the Patent if the Patent was ultimately held valid by the EPO and valid and infringed by the English courts.

In view of these two additional undertakings, the Judge decided to grant a stay. He held that taking all of the factors set out in the IPCom decision into consideration, the overall balance now came down in favour of the grant of a stay.