The Need to Protect IP in the Cloud
With the Unitary Patent looking increasingly likely, the Patents Court has stolen a march by allowing a declaration of non-infringement of a European Patent to proceed in respect not just of the UK designation but also designations in France, Germany, Italy and Spain.
The patentee (Lilly) disputed that Actavis (the claimant) should be allowed to include the non-UK designations on the grounds of 'forum non conveniens' (essentially on the grounds that the national courts of those countries were the most appropriate to decide issues of patent infringement for their jurisdiction).
The issue of whether such infringement claims (where validity is not in issue) are justiciable has long been debated throughout the EU, and the CJEU in Roche v Primus and GAT v LUK seemed to have decided that they should normally be decided by national courts. However, in the current case, Actavis undertook not to raise issues of invalidity before the court (albeit that they had intervened in an EPO opposition appeal). Given that, the issue was just one of claim interpretation and the law of infringement where (as a result of Article 69 EPC) there should be a uniformity of approach – at least in theory, if not in practice.
After deciding that the proceedings were validly served on Lilly (of USA) both on Lilly’s US’s English solicitors, and by their service on the in-house patent attorney of Lilly UK who acted as Lilly US’s representative before the EPO, the Judge decided that the English Patents Court did have jurisdiction over the non-UK designations and was well placed to exercise it as:
- it would mean one trial, not five separate ones;
- it should be cheaper (although the issue as to the law of infringement in each country might need local law evidence);
- only one set of expert witnesses would be needed;
- validity was not an issue, the only issue was of infringement.
Ever since the Supreme Court’s decision in Lucasfilm v Ainsworth (which held that infringement of foreign copyright was justiciable in the UK), there has been speculation whether the same would apply to patents. We now have our answer, at least until the Court of Appeal or Supreme Court decides otherwise. It will also be interesting to see if the Dusseldorf Court (where Lilly has brought patent infringement proceedings against Actavis after the English proceedings were issued) feels it is bound to stop its proceedings on the grounds of 'lis alibi pendens'.