IP Cases & Articles

Declatory relief to "clear the path": Fujifilm v AbbVie

In our February newsletter, we reported on a number of interim decisions in the case of Fujifilm Kyowa Kirin Biologics v AbbVie Biotechnology Limited [2017] EWHC 395 (Pat).

Fujifilm was seeking relief to deal with pending divisional applications at the EPO which were potential blocks to its path to market in Europe. Because these patent applications had not proceeded to grant, their validity could not be challenged in court or by opposition. Nevertheless, because they may ultimately become granted patents, Fujifilm faced years of commercial uncertainty, especially where successive divisionals were being filed.

The relief sought by Fujifilm was in the form of so-called "Arrow declarations", named after a 2007 UK case between Arrow Generics and Merck & Co, Inc. The form of the relief is this: the party concerned (in this case Fujifilm and two others) asks the court to declare that, as of the earliest priority date of the divisional application(s), the product which it plans to import and sell in Europe, was obvious in the light of the prior art. The effect of such a declaration is to create a Gillette-type defence to any infringement claim of a future patent granted from the divisional application(s). This defence works as follows: if the "obvious" accused product infringes, the patent must be invalid. Importantly, such declarations are not challenges to the validity of a pending patent application since that is not possible before grant and is a matter for the relevant patent office only.

The jurisdiction to grant declaratory relief in UK courts is very broad indeed – the court has an inherent power to make declarations that "serve a useful commercial purpose". AbbVie vigorously contested the declarations sought by Fujifilm, saying they served no useful commercial purpose in the UK. They said this was because (a) all relevant granted patents had been revoked or surrendered in the UK and (b) AbbVie had withdrawn the UK designation for all relevant divisional applications. However, the patents and divisional applications remained relevant for other European countries.

The substantive trial of the case took place in January and February, and judgment was given on Friday 03 March. The court granted the relief sought by Fujifilm. The judge clearly rejected AbbVie's contentions for a number of reasons. In particular, he found there was a useful purpose despite the absence of relevant rights in the UK. These factors were almost all associated with AbbVie's conduct, whereby AbbVie: (a) refused to submit to judgment (which it would have done if the declarations sought did indeed serve no useful commercial purpose); (b) perpetuated commercial uncertainty by continually filing divisionals and at the same time shielding their patents from scrutiny by the UK Courts (by withdrawing designations or surrendering patents in the UK only); and (c) publicly threatening to enforce its patents anywhere in the world.

Having considered the prior art at the relevant dates, the judge granted the declarations sought. Fujifilm's product was found to be obvious at the earliest priority date, and the result is that it should not infringe any relevant divisional applied for by AbbVie.

This is potentially a very powerful form of relief, available from the UK courts applying their inherent jurisdiction. As Europe heads towards the UPC, and a potential shift to central European patent enforcement through litigation in that court, "Arrow declarations" could gain even more significance. There is no legal basis for the UPC to grant such declarations, which will remain within the jurisdiction of national courts alone. The UK will therefore be able to grant "Arrow" declarations in the future which could form a very useful part of UPC litigation strategy.

Full decision: http://dycip.com/fujivabbvie

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