English Court Will Exercise Jurisdiction Over Foreign Designations Of European Patents Where Validity Is Not Challenged

Actavis Group and Eli Lilly & Company [2013] EWCA Civ 517

The Court of Appeal has recently dismissed a jurisdictional challenge brought by Eli Lilly in respect of the non-UK designations of a European Patent. In reaching their decision, the Court of Appeal has confirmed that the English courts have jurisdiction to hear claims for non-infringement declaratory relief in respect of foreign designations of European patents, provided there is no challenge to the validity of the patent and there is a legitimate basis for the English court to exercise jurisdiction.

Background

Eli Lilly ("Lilly") developed the chemotherapy drug Alimta (INN-pemetrexed). Alimta is protected by Supplementary Protection Certificates (the "SPCs") in various EU member states which are due to expire in December 2015. Lilly also owns a European Patent (the "Patent") which is directed to the use of pemetrexed in the form of its disodium salt. The Patent, which is not due to expire until 2021, has national designations in the UK, France, Germany, Italy and Spain.

Actavis Group hf ("Actavis Group"), which is the parent operating company of numerous subsidiaries incorporated in various countries, including the UK, France, Germany, Italy, Spain and Iceland, wished to market a product to compete with Alimta. Whilst Actavis Group accepted that it could not do so until the SPCs expired in December 2015, it asserted that it could do so after this date (as their competing product contained pemetrexed dipotassium and so could not infringe the Patent). Actavis Group therefore sought declarations of non-infringement in respect of each of the Patent's designations. The validity of the Patent was not challenged.

Solicitors for Actavis Group wrote to Lilly's representatives stating that they "represented Actavis Group PTC ehf and its relevant national subsidiaries" and indicating their client's intention to launch a competing product upon the expiry of the SPCs. Actavis Group PTC ehf ("Actavis PTC") is an Icelandic subsidiary of Actavis Group which, whilst it has its own subsidiaries, none of these were trading in any of the Patent's designated states. Pre-action correspondence followed between the parties' solicitors and, upon request from Actavis Group's solicitors, Lilly's solicitors confirmed that they were instructed to accept service on behalf of their client.

Declaratory action

Proceedings seeking declarations of non-infringement of the Patent through dealing in the competing...