Arrow declaration misses its target
Summary
The English Patents Court and the decisions of its judges are highly regarded internationally, and particularly within Member States of the
One such type of decision is an Arrow declaration, named after the case
This appeal considers the extent to which the Patents Court will go in order to provide a "spin-off value" for one party, in the courts of another jurisdiction.
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Case background
The Respondents ("Novartis") markets fingolimod (under the mark GILENYA) as a treatment for a type of Multiple Sclerosis throughout the EU and in the
Novartis has various patent families around fingolimod, including one claiming a daily dose of 0.5 mg, administered orally. This family included an International Patent Application claiming priority from
Having obtained a marketing authorization for generic fingolimod, in
After further interim applications for striking out and amendment of statements of case, there was a 2 day trial on the Arrow declaration application. The only issue concerned the court's discretion whether to grant the declaration in circumstances where there was (now) no patent protection in the
Decision
Arnold LJ (as one would expect) thoroughly reviewed the law relating to Arrow declarations. As Novartis had de-designated the
The Patents Court takes the "spin-off value" into account in a number of contexts, namely, whether to: expedite trial to be before a foreign court's trial; stay English proceedings pending EPO opposition determination; consider if a claim is an abuse of process. In the present case, Teva sought a declaration for the sole purpose of influencing a foreign court, which would decide the matter under its own domestic law (albeit that EPC patent law is substantially harmonized). The judge considered the four English decisions where this had previously occurred.
Arnold LJ concluded that it would be wrong for English courts to make declarations solely for the purposes of influencing the decision of a foreign court, where that court's jurisdiction's own law applied. He then went on to consider whether the trial judge had, in any event, applied the law incorrectly or otherwise erred, and considered she had not. The judgement was upheld and the appeal dismissed.
Implication
As patent lawyers, while we can be justifiably proud of the English Patents Court and its decisions, there are limits to the uses and purposes they can be put to, outside of its own jurisdiction. Although Teva argued its supply may be cut off if Country A's courts injuncted them, as Arnold LJ pointed out, that is a consequence of that country's courts applying its domestic law. Aside from that, there is no obligation or guarantee that the foreign court would follow what the English Patents Court had decided.
However, with the uncertainty which will befall the UPC until some sort of harmony has been achieved, the English Patents Court's decisions will undoubtedly be sought more frequently, and remain the target for parties seeking Arrow declarations.
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