Irish Commercial Court Refuses To Suspend Patent Litigation

The Irish Commercial Court has departed from a long standing precedent and refused to suspend national patent revocation proceedings whilst parallel opposition proceedings are ongoing in the European Patents Office (the "EPO"). This has the potential to result in an increase in litigating national patents devolved from European patents in Ireland. In this article, IP litigator Michael Finn highlights some of the key aspects of the decision.

Some background facts - the basis for the application to stay the proceedings

Eisai are the holders of an Irish Patent, derived from a European Patent under the European Patent Convention, which includes compounds that may be used to treat Alzheimer's disease. Opposition proceedings in the EPO are currently under appeal to the Technical Bureau of Appeal ("TBA").

Eli Lilly also initiated national patent revocation proceedings in Ireland's Commercial Court, which is an internationally recognised forum for fast-tracking commercial disputes. IP disputes have an automatic right of entry to the Commercial Court provided certain conditions are met.

Eisai asked the Court to suspend the entire Irish proceedings pending the determination by the TBA. It relied on the leading Irish precedent of Merck & Co Inc. v GD Searle & Co1, in which the High Court suspended Irish revocation proceedings pending the decision in opposition proceedings in the EPO. Eisai emphasised the potential waste of resources that would result from simultaneous proceedings before two separate bodies. It also opposed the argument by Eli Lilly that there was an urgent need to conclude the Irish proceedings, and highlighted the lack of urgency which it alleged Eli Lilly had demonstrated in practice, including their failure to apply for an expedited hearing before the TBA.

Court decision

On 31 July 2018, the Court refused to suspend the entire proceedings. The Court suspended the trial until late 2019. However, in a departure from previous Irish case law, the Court directed that all pre-trial steps in the proceedings should go ahead.

Analysis

The Court concluded that under Merck the starting point was that a suspension should be granted. The Court should then consider whether any prejudice overrides this starting point. The Court recognised that the approach of the English courts has changed since Merck, in particular in IPCom v HTC and Virgin Atlantic v Zodiac as well as other leading cases. The Court determined that the key factors to be applied...