On 27th November 2014, the Patents Court handed down a ruling which could significantly affect the way litigation is conducted in Europe. It was held that a declaration of non-infringement in relation to the UK, French, German, Italian and Spanish designations of a European patent could be brought before the English Court.
The case concerned Permetrexed, a cancer treatment marketed by Eli Lilly. Actavis, a multinational supplier of generic pharmaceuticals, did not challenge the validity of the European patent but sought declarations of non-infringement for each of the UK, French, German, Italian and Spanish designations. Eli Lilly did not contest the English Court’s jurisdiction with regard to the UK designation, but sought a declaration that the Court does not have, or should not exercise, jurisdiction in respect of the foreign designations.
Lilly submitted that, even where there was no challenge to validity, the natural forum for determining an issue as to patent infringement was the courts of the state in which the patent was registered.
However, Mr Justice Arnold stated that, although there are different national approaches, these differences “are rather less now than they have been in the past. Certainly in recent years the European patent judiciary have been striving for consistency. [ ...] Certainly I do not consider that [...] that those courts are clearly or distinctly more appropriate than this Court.”
Further, citing the Supreme Court’s decision in Lucasfilm v Ainsworth, Arnold J. indicated that if claims for foreign copyright infringement were justiciable before the English Courts, then so should claims for foreign patent infringement, as patents are no different to copyrights for the purpose of justiciability.
Therefore, Arnold J. held that the applicable law was indeed English law and that it was proper for the court to issue a declaration of non-infringement in France, Italy, and Spain as well as in the UK.
It may be that a different decision would have been reached if the validity of the patent had been contested and it also remains to be seen whether this decision will be appealed and, if so, upheld by the Court of Appeal.
Nonetheless, this decision seems to have opened the way for pan-European declarations to be sought and granted.