Guidance Issued On English Approach To Staying Patent Revocation Proceedings

In dismissing an appeal against a refusal to stay patent

revocation proceedings, the English Court of Appeal has set out

useful guidance on the criteria to be applied in determining

whether such proceedings before the English courts should be

stayed in favor of European Patent Office opposition

proceedings. Glaxo Group Limited v. Genentech Inc. and

Biogen Idec Inc., [2008] EWCA Civ 23 (Eng. Ct. of Appeal,

Jan. 31, 2008) (Mummery, Lord J.).

In order to clear the path for the commercialization of a

new product for rheumatoid arthritis, the claimant Glaxo

applied to the English Patents Court in February 2007 for

revocation of a European patent held by the defendants. Glaxo

had previously filed a notice of opposition to the patent at

the European Patent Office (EPO) and relied on the same broad

grounds of invalidity in both cases. The English trial was set

down for February 2008, at which point Genentech applied to

stay those proceedings in favor of those at the EPO, arguing

that the English proceedings were an abusive duplication of the

EPO proceedings.

The court of first instance rejected the application for a

stay at first instance on the basis that, as it would take at

least another 18 months and perhaps up to three years for the

EPO to come to a decision, granting a stay would unduly

prejudice Glaxo's commercial interest in launching its new

product as soon as possible. Genentech appealed.

The Court of Appeal upheld the first instance decision as a

valid exercise of the judge's discretion. In doing so, the

Court emphasized that it was legitimate for a party contesting

the validity of a European patent to do so both in a revocation

action in the English court and by opposition proceedings at

the EPO. In contrast to ordinary commercial litigation, no

principle of estoppel arose as a result. The most important

factor for the court to consider in such circumstances will

usually be the length of time for the respective proceedings to

achieve some certainty on the issue of the validity of the

patent-in-suit, so that business knows where it stands. If the

likelihood is that the national proceedings would achieve this

resolution...