English Court Of Appeal 'Widens The Target' For Arrow Declarations (And Hands Control To Defendants)

Patentees don't like Arrow declarations! So much so that, for each such declaration that has been granted to date in the English Courts (and some that haven't), the patentee in question has brought interim proceedings to strike-out the claim for the declaration (or that it be summarily refused), and further, when unsuccessful, has gone on to the Court of Appeal for another shot.

This pattern has been observed from the Court of Appeal's judgments in Fujifilm v AbbVie [2017] EWCA Civ 1, Glaxo v Vectura [2018] EWCA Civ 1496, and, most recently Mexichem v Honeywell [2020] EWCA Civ 473. In each of the Fujifilm and Glaxo cases, the claimant was represented by Gowling WLG and was subsequently awarded Arrow relief from the High Court of England and Wales. (These are the only two instances in which Arrow declarations have been awarded by the English court - see here for our commentary on Fujifilm and here for our commentary on Glaxo). The Mexichem case is the third time in so many years that the Court of Appeal has been called upon to consider the merits of this new form of relief, at the interim stage.

The Arrow jurisdiction

The concept of an Arrow declaration first arose in Arrow v Merck [2007] EWHC 1900 (Pat) (itself also an interim strike-out application). It is, in effect, a declaration that a product or process of the applicant (or an aspect of a product or process), was obvious or anticipated at the relevant date (generally the priority date of the patent family of concern).

If the Arrow declaration is granted, the result is that the applicant's product or process is either outside the scope of any patents granted in the future, or if inside, that such a patent must be invalid (as it covers something obvious or old). As the Court of Appeal has stated (in Glaxo - see below): "The Arrow declaration is, in effect, a declaration that a party has a Gillette defence as of a particular date against attacks by later patents."

Since the Arrow case, the court's discretionary power to grant Arrow declarations has been reviewed by the English Court of Appeal in the Fujifilm and Glaxo cases. Pursuant to those judgments, it is now settled that such declarations may in principle be granted where justified by the circumstances. At the heart of those circumstances is the concept that any such declaration must serve a "useful purpose". As stated by the Court of Appeal in the Mexichem case: "A declaration should not be made where it serves no useful purpose, but, subject to that, the approach is one of discretion rather than jurisdiction."

The breadth of Arrow relief

In FujiFilm, the Arrow declaration related to the obviousness of a specific dosing regimen for Humira (and its biosimilars). In Glaxo, the Arrow declaration related to a highly particularised process for formulating asthma drugs. Both declarations were specific to aspects of the applicant's product or process for producing it. Both...