The Court of Appeal has upheld two judgments, of Arnold J and Henry Carr J, refusing to strike out claims for Arrow declarations in Fujifilm v AbbVie  EWCA Civ 1. While the claimant in this case still has to make out its full case to obtain the declaration, the Court of Appeal’s judgment is important in confirming that Arrow declarations will be available in suitable cases.
What is an Arrow declaration?
In the UK a patent cannot be challenged until it grants. However, under section 69 a patentee can, after grant, claim damages for acts committed prior to grant if they would have infringed the patent (subject to certain provisos relating to changes in the claims). This regime has the potential to create a substantial damages liability for businesses which commercialise technology that is subject to an as-yet ungranted patent.
An Arrow declaration allows a claimant to obtain a declaration that their intended product or process was disclosed or would have been obvious at the priority date of a patent application of concern. Obtaining such a declaration does not have any effect on the validity of any patent application or its ability to grant.
However, if a patent grants in the future and is asserted against the party which has obtained the Arrow declaration, the declaration can be deployed by way of a ‘Gillette’ defence: if the product or process was obvious then a patent which it infringes is. The advantage of using the Arrow declaration is that the claimant can test the position before launching their product and thereby incurring any damages.
The first Arrow declaration was obtained in Arrow Generics v Merck  FSR 39 where Kitchin J (as he then was) refused to strike out a claim for a declaration of this kind concerning Arrow’s proposed pharmaceutical product, alendronate. The decision was not challenged on appeal and did not go to final judgment.
However, both in that case and in the Fujifilm v Abbvie litigation the patentees raised various arguments to the effect that the Patents Court has no jurisdiction to grant Arrow declarations because they amount to a challenge to validity yet are not one of the permitted kinds of proceedings in which validity may be put in issue under the Patents Act 1977.
Criteria for an Arrow declaration
The Court of Appeal did not set out detailed criteria for obtaining Arrow declarations, holding rather that the detailed principles should be developed by the Patents Court. The Court did hold that the usual principles applicable to the granting of declarations apply to Arrow declarations, i.e. in particular that the declaration would serve a useful purpose and whether there are any special reasons for or against granting the declaration. The Court also noted that the mere existence of a patent application is not a sufficient reason to enable a party to obtain an Arrow declaration concerning subject matter covered by that patent application.
In the original Arrow case the claimant relied on the fact that it had attempted