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"Arrow" declarations: Defence against submarine divisionals and opting European patent applications out of the UPC

Date: 16 May 2017

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An "Arrow" declaration is a remedy that can be applied for seeking a court declaration that a certain product was known or obvious at a particular date. For example, that a party is free to make and sell its product notwithstanding a certain pending patent application because any claims that might validly be granted would not be infringed. It is a pre-emptive Gillette defence, because it seeks to establish that the product is old so it does not matter whether the claims would be invalid or not infringed – either way, the path to market is cleared.

 

Such a declaration takes its name after Arrow Generics v Merck.[2] More recently, the jurisdiction of the Patents Court to make such a declaration was challenged and reviewed by the Court of Appeal in Fujifilm Kyowa Kirin Biologics ("FKB") v AbbVie Biotechnology.[3] The Court of Appeal upheld the jurisdiction of the Patents Court to make such declarations.

 

Briefly, the principal grounds under which AbbVie argued that the Patents Court had no jurisdiction to make such an order arose from Patents Act 1977 section 74(2) which says that the validity of a patent may not be put in issue other than in an action for revocation or by way of defence to an action for infringement (or in certain other specific instances) and "no proceedings may be instituted seeking only a declaration as to the validity or invalidity of a patent". AbbVie argued that the action was in essence an attack on the validity of a putative patent and so was precluded by s74 (because it would have to be brought after grant under s70). The Court of Appeal held that (a) the case relates to an application, not a patent and (b) it is not only invalidity that is in question, but equally non-infringement. So on both counts, s74 does not apply and moreover there are sound policy reasons for awarding such declarations in appropriate cases:

 

Because an applicant may wait until an earlier application has been in prosecution for many years before filing even a first divisional, it should be clear... that the final form of any protection based on the subject matter of the parent application may take a very long time indeed to emerge. The protection conferred by the earliest application may have ended, but many divisionals and sub-divisionals... may still be in the pipeline [including some] which have not been published, and more to come which have not even been filed.

 

The Court referred to this as the problem of the "submarine divisional" and said the uncertainty that arises may have a chilling effect on competition.

 

AbbVie also tried to run an argument to the effect that such declarations would undermine the system of allocation of jurisdiction under Art. 24(4) of the recast Brussels Regulation. This was a less forceful argument, but we review it here for reasons set out below. That section of the Regulation says "the courts of each Member State shall have exclusive jurisdiction in proceedings concerned with the registration or validity of any European patent granted for that Member State". AbbVie were in effect trying to argue that this would be a back door way of invalidating a European patent.

 

The Court of Appeal merely said that insofar as the declaration can be said to be "concerned with the registration or validity of patents", it can only be concerned with the registration or validity of EP (UK)s. Moreover, when the declaration states that the product is obvious, it will do so as a matter of UK patent law. The validity of other patents for other designated states is a matter for the law of those states.

 

Arrow Declarations under the UPC – reason to opt out of pending applications?

 

It would seem that the UPC will be open to considering Arrow declarations, because Art. 32(1)(g) of the UPC Agreement confers exclusive competence on the Court in respect of, inter alia, "actions relating to the use of the invention prior to the granting of the patent or to the right based on prior use of the invention".

 

Note that "actions relating to the use of the invention prior to the granting of the patent" does not simply mean damages arising from the provisional protection conferred by publication – those are separately covered by Art. 32(1) (f). Further indications of the competence of the Court can be found in Recital 2 which refers to "defence against unfounded claims and claims relating to patents which should be revoked". Recital 5 has similar words. Recital 13 may also be invoked, as it calls for "the right to an effective remedy before a tribunal". Only actions not falling under Art.32(1) lie with the national courts – see Art. 32(2).

 

Of course, a party can opt out of the exclusive competence of the Court during the transitional period (Art. 83(3)UPC).[4] But the transitional provisions of Art. 83(1) apply only to actions for infringement or revocation of a patent (or SPC) and do not say anything explicit about parallel national jurisdiction during the 7-year transitional period over actions relating to the use of the invention prior to the granting of the patent. Can we read more into this? Does it mean that actions under Art. 32(1) other than those listed in Art. 83(1) are exclusive to the UPC from the outset? Does it mean that Arrow declarations under European patents that are not opted out are the exclusive domain of the UPC? Very possibly. It might be wise to register an opt-out for a European patent application before an Arrow action is commenced in the national court, otherwise there may be some force in a defence to strike out for lack of jurisdiction– contrast the broad scope of Art. 32(1)(g) ("actions relating to the use of the invention prior to the granting of the [European] patent") with the narrow scope of section 24 of the Brussels Regulation (see above "proceedings concerned with... any European patent granted for that Member State").

 

In contrast to Art. 83(1), if a European patent application is opted out under Art. 83(3), such opt-out is from the [exclusive] jurisdiction of the Court for all purposes.

 

A claim for an Arrow declaration would seem to fall under Rule 60 of the Rules of Procedure. Notwithstanding that the rule is headed "Declaration of non-infringement", it is not limited to claims under Art. 32(1)(b) and extends to any claim for "a declaration that the performance of a specific act does not, or a proposed act would not, constitute an infringement of a patent".[5]

 

The potential claimant must first apply to the proprietor (or licensee) for a written acknowledgment that the act would not constitute an infringement, giving full particulars. The proprietor (or licensee) has one month to respond. Whether this month gives enough time for the proprietor to lodge an opt-out and have that registered depends on the speed of the Registry. (An opt out only becomes effective upon entry in the Register.)

 

Accordingly, proprietors of European patents who are considering opting their patents out of the UPC may also wish to consider pending applications, especially those which have been divided or are yet to be divided.

 

For further discussion of this case, please see the following article: Humira patent rights shot by "Fujifilm declaration"

 

1  This article was published in CIPA Journal, April 2017

2  [2007] FSR 39

3  [2017] EWCA Civ 1

4  There is debate as to the term "exclusive" in Art. 83(3) and about the non-sequitur over opting out of an exclusive jurisdiction that, for the transitional period, is not exclusive. It is beyond the scope of this article to speculate whether the fact that Art. 83(1) leaves out certain actions (and leaves them exclusively with the Court) leads to the conclusion that Art. 83(3) is referring only to those actions – that would seem absurd – or leaves them non-exclusively with the UPC and the national courts – that would be very surprising. It may perhaps only be put to the test when someone applies for an Arrow injunction under an opted-out patent application.

5  It may be interpreted that "patent" strictly means "granted patent" and not "putative patent", but the rule seems apt and there is no other rule.

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