Patents: Declaratory Relief

By Audrey Horton

08-2019

Summary

The Patents Court has refused to grant an Arrow declaration following de-designation of UK from pending patent applications because there was no uncertainty about UK patent rights and the true purpose of the declaration would be its use in foreign courts. 

Background

In Arrow Generics Ltd v Merck & Co Inc, the High Court held that it had a discretionary power to grant a declaration (Arrow declaration) that a generic pharmaceutical was known or obvious at the priority date of divisional patent applications ([2007] EWHC 1900 (Pat))

Where an alleged infringement differs in only a non-novel or non-obvious way from the prior art at the priority date of the patent, the defendant has a good defence to infringement (Gillette defence) and it is not necessary also to challenge the validity of the patent (Gillette Safety Razor Co v Anglo-American Trading Co Ltd [1913]).

Where a patentee had abandoned UK patent protection and offered undertakings that it would not obtain UK patent protection of the relevant scope, the Court of Appeal held that an Arrow declaration would still serve a useful purpose where there was still significant commercial uncertainty and, having found that a Gillette defence was made out, granted the declaration (Fujifilm Kyowa Kirin Biologics Co Ltd v AbbVie Biotechnology Ltd & Another, www.practicallaw.com/1-639-2973). 

The Court of Appeal has held that the courts should only grant an Arrow declaration if the declaration would serve a useful purpose (Glaxo Group Ltd and others v Vectura Ltd [2018] EWCA Civ 1496).

Facts

P applied for an Arrow declaration in relation to its proposed launch in Europe, including the UK, of a product for the treatment of various cancers.

R already marketed the product, the active ingredient of which was protected by its patent.  As a result of a supplementary protection certificate, the protection conferred by R's basic patent had been extended to June 2020. P intended to launch its biosimilar product after that, but R had a number of second-line patents and patent applications relating to combinations of the drug with other cancer drugs for use in treating various types of cancers. P was concerned that one of those applications might lead to a patent being granted either before or after June 2020, and that R might try to obtain an interlocutory injunction against P.

R denied that it had any intention of obtaining a UK patent in the future since it had "de-designated" the UK from all relevant pending patent applications.

P argued that it would have a Gillette defence to any patent claim should R sue after the launch of its product because, given the state of the art at the earliest claimed priority date for a given patent or application, the invention lacked novelty or  was obvious. P sought an Arrow declaration to the effect that certain acts would have been obvious

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