Court Of Appeal Confirms Cross-Border Non-Infringement Jurisdiction

Today, the Court of Appeal has upheld Arnold J's first instance decision that the English court has jurisdiction to hear actions of non-infringement concerning the national French, German, Italian and Spanish counterparts of EP 1 313 508 (for permetrexed dissodium in combination with vitamin B12 or pharmaceutical derivatives thereof)1.

The decision means that the English court can make a non-infringement determination in respect of these patents at trial in respect of Actavis's proposed dealings in permetrexed dipotassium.

Furthermore, for each counterpart of the EP that the English court determines is not infringed under the respective national laws of infringement, including claim construction, it is prepared to make a (cross-border) declaration of non-infringement.

The result will be seen as a potential boon by those seeking to avoid the need for parallel actions in each European country where a declaration of non-infringement is sought. Nonetheless, the willingness of the English court to entertain applications for cross-border declarations is limited to the following circumstances:

The patentee must be either domiciled in the UK, or outside the EU; The claim must be validly served; and Validity will not be challenged in the proceedings. If the foreign patentee has a place of business in the UK (as Lilly, which though domiciled in the US, was held to have in this case), service can be effected there under English court rules. Otherwise, another point that arises from the case is that patentees should take care before consenting to service...