By Dr. Janet Strath
The UK High Court has been asked to consider (and has struck out) an unusual claim for damages arising from alleged “misleading or dishonest misrepresentations” to the European Patent Office.
The case concerned the pharmaceutical drug perindopril, a prescription-only medicine used as an angiotensin converting enzyme (ACE) inhibitor to treat high blood pressure, which Servier sold in the UK under the brand name "Coversyl". The basic protection for perindopril expired in 2006.
Servier had a later European patent for the alpha crystalline form of the perindopril salt, through which they sought to extend their monopoly in perindopril. The later patent was held invalid back in 2007 1) but only after Servier has been granted interim relief. In upholding the invalidity decision on appeal, Lord Justice Jacob referred to the patent as “the sort of patent which can give the patent system a bad name” 2).
Subsequently, the English Health Authorities commenced proceedings 3), seeking damages from Servier for a series of alleged breaches of both EU and UK competition law and a free-standing claim for the tort of unlawful means. Here we look at the ‘unlawful means’ tort.
The unlawful means claim
The English Heath Authorities (the claimants) alleged that the patentee had obtained the grant of the alpha crystalline patent, and defended it in opposition proceedings, by making misleading or dishonest misrepresentations to the EPO.
Under the heading “Abuse of the Patent System” the claimants stated that the patent application “contained express and implied representations that the alpha form was novel and implied representations that the alpha form was not obvious” and that representations were “repeated and/or further relied on” in contesting the opposition proceedings before the EPO and in the proceedings in the English courts in successfully obtaining interim relief. They alleged that the conduct of the patentee had caused elevated prices for perindopril, achieved at their expense, by virtue of them bearing the financial burden of reimbursement payments to pharmacists and doctors for perindopril dispensed and/or administered pursuant to the NHS.
Servier applied to strike out the free-standing claim for the tort of unlawful means on the basis that it disclosed no cause of action.
For an unlawful means claim to succeed, there must be “acts intended to cause loss to the claimant by interfering with the freedom of a third party in a way which is unlawful as against that third party and which is intended to cause loss to the claimant.”4) Such acts do not include acts which may be unlawful against a third party but which do not affect his or her freedom to deal with the claimant.
Servier (defending) submitted that the “third party” was the EPO and the English court and that there was no question of interference with their “freedom to deal” with the English Health Authorities or anyone else.
Mr Justice Roth concluded that, given that the EPO or English courts did not have any economic dealings with the English Health Authorities, it was clear that the claim for the tort of unlawful means was bound to fail, so it was struck out.
Being bound by Article 6(1) of the European Convention on Human Rights, the courts have to exercise caution before striking out a claim on a summary application. But in this case, even assuming all the facts in favour of the English Health Authorities, the issue raised was a pure point of law and was suitable for striking out.
Unlike the US, the UK does not have a doctrine of “fraud on the patent office”. However, the express or implied representations which lay at the foundation of the claimants’ allegation of deceit were not hopelessly unarguable. Indeed, the judge assumed that the allegation of deceit was made out. He left these matters to be considered under competition (anti-trust) law rather than the economic tort of unlawful means. The competition law claim remains to be considered at trial.
Parties are not immunised against misleading or dishonest representations to the EPO as to the validity of a patent. Even if they do not give rise to a self-standing tort, they may give rise to other claims for damages. Misrepresentations to the court would, of course, be a very serious matter.
1) Servier v Apotex  EWHC 1538
2) Servier v Apotex  EWCA Civ 445
3) Secretary for State for Health v Servier  EWHC 2006 (Ch)
4) OBG Ltd v Allen  UKHL 21
For questions about this matter or related issues, please contact Dr. Janet Strath
Tuesday, October 17, 2017