UK: An Important New Weapon In Pan-European Patent Disputes - The English Courts Can Hear Non-English Patent Infringement Cases

Last Updated: 11 December 2012
Article by Jonathan Radcliffe

Keywords pan-European patent disputes, patent infringement,

Summary and implications

The English Patents Court has delivered a ground-breaking judgment which could change the way that European patent litigation is conducted. 1 It has significant strategic implications for companies involved in pan-European patent litigation, or who are crafting such strategies.

This judgment opens the way for litigants to seek seek pan-European declarations of non-infringement from a single court. It establishes that the English courts can now determine non-infringement disputes covering all of a European patent's national designations, not just the British national designation alone. The decision is significant for a number of reasons.

  • The English courts have handed litigants a major new weapon to fight their patent battles over multiple foreign patent rights. This case extends the convenient English procedure for patent infringement clearance2 of a European patent to include clearance of other relevant European designations through the mechanism of a single case seeking a pan-European declaration of non-infringement heard in England and - if agreed - under one law and with one set of expert witnesses and evidence.
  • This new process will save significant costs and time, as well as allowing parties to take advantage of the procedural advantages inherent in the English common law system (document discovery, and cross-examination of expert and factual evidence at trial). It also eliminates the risk of inconsistent decisions inherent in the current European patent landscape; even if different national laws are applied by the one court, there would only be one judgment and one appeal process.
  • This decision has important ramifications where infringement is simultaneously in issue in multiple European markets. But it will not apply where validity is in dispute, because under the Brussels Convention a challenge to validity engages the exclusive jurisdiction of each European country to determine challenges to the validity of their own national registered rights.
  • Coupled with the recent Court of Justice of the European Union decision in Solvay v. Honeywell permitting interim pan-European injunctions in patent cases, which has been expressly acknowledged by the English Court, this opens the prospect for patent litigants of a real alternative to the current European patent litigation landscape (which requires separate litigation in each country).
  • At a time when European patent judges are widely questioning the current proposed single European Patent Court, this case shows London positioning itself as a centre for excellence for patent litigation and as a venue for pan-European patent disputes, as well as offering litigants the potential for cost-effective and speedy litigation.

Factual background

Eli Lilly's cancer drug pemetrexed is protected by a basic patent extended by supplementary protection certificates that expire in December 2015, and by another patent that expires in June 2021 for the use of pemetrexed disodium in combination with vitamin B12.

Actavis wanted to resolve the question whether its proposed sale of pemetrexed dipotassium would infringe the SPCs, and wanted to do so in time to be able enter the major pharmaceutical markets in Europe on expiry of the SPCs. Actavis therefore commenced proceedings in the English Patents Court seeking declarations of non-infringement under section 71 of the Patents Act in relation to each of the English, French, German, Italian and Spanish national designations of the patent. Eli Lilly contested the jurisdiction of the English Courts to rule on all save the English designation of the patent.

Importantly, Actavis did not challenge the validity of the patent in the litigation. It irrevocably bound itself through undertakings to the Court not to challenge validity. This meant that the exclusive jurisdiction given to countries in Europe under the Brussels Convention for challenges to the validity of registered rights was not engaged.

The decision

Although the result in this case turned on an analysis of the English rules of service of process at a granular level (which will not be considered further for present purposes), the points of real interest relate to the jurisdiction the English Patents Court extended over the non-English designations of the patent.

  • Extending the jurisdiction to hear non-English infringement disputes to patents

Following the decision of the UK Supreme Court in Lucasfilm Ltd v Ainsworth3, Eli Lilly was unable to dispute that the English courts could not hear claims relating to the French, German, Italian and Spanish national designations of the patent, in addition to the British national designation.

The Patents Court held that these claims for a declaration of non-infringement were justiciable by the English courts and that it had subject matter jurisdiction, even though Lucasfilm Ltd v Ainsworth was a copyright case (concerning American copyrights in the Star Wars stormtrooper helmets) and this concerned patents. Despite the fact that such claims were previously unprecedented in England, the position is that the law had been changed by the Supreme Court in Lucasfilm.

  • The Brussels Convention exclusive jurisdiction on patent validity

Actavis made no challenge to the validity of the patent in the English declaratory proceedings. Had it done so, that would have engaged the exclusive jurisdiction of each European country under the Brussels Convention to determine challenges to the validity of their own national registered rights.4 Importantly, Actavis gave the Court undertakings not to challenge validity or to contend in argument that the patent is invalid in these proceedings if the Court accepted jurisdiction over the claims. This tactical device ensured that the Court was not required to decline jurisdiction by virtue of Article 22(4) of the Brussels Regulation.

  • Which national law to apply to pan-European infringement cases

It was accepted by the parties and the Court that the law applicable to whether the English Court could grant declarations on non-infringement under the patent's non-English designations was English law as the lex fori.

Under the Rome II Convention5 the law applicable to the non-infringement of each non-English designation of the patent is the substantive patent law of that country. However, the Court held that it would apply English law to each national designation on the assumption those laws were substantively no different to English law, unless Eli Lilly positively chose to assert that there were relevant differences which required the English Court to apply the relevant foreign law to determine whether there would be infringement.

  • As all the relevant non-English countries whose national designations were in issue had all implemented Articles 25 and 26 of the Community Patent Convention, as had England, all therefore had identical substantive laws on infringement.
  • Although in theory the position on accessorial liability can be different in Europe, Eli Lilly was unable to adduce any evidence that there is any difference between the relevant national laws on accessorial liability that might be material to the question of infringement.
  • Similar considerations applied to interpretation of the patent itself. Each of the relevant countries gives effect in its national substantive patent law to Article 69 of the European Patent Convention and to the Protocol on the Interpretation of Article 69. In principle this means that each country has the same approach to determining the scope of protection of a patent.
  • The Court accepted that there are some national differences on the issue of equivalents, but was sceptical that these were responsible for different outcomes in parallel cases.

The Court identified a number of advantages to the English Court determining infringement in all five relevant countries.

  • The litigation could be handled by one team of lawyers on each side using one set of factual and expert witnesses. This would save legal costs for both sides. This would especially be the case if experiments were needed to prove issues around infringement.
  • The Judge was unimpressed by the argument that there would be no costs savings because expert evidence would be required to prove each relevant national law, which would be difficult and expensive to prove. The Judge held that this was simply to be treated as a question of fact. It is increasingly common in intellectual property cases for the English courts to apply case law from other EU Member States when deciding questions of European Union law or national law based on European conventions such as the CPC, so there were no difficulties in doing so.
  • Even if different laws were applied, it would mean that one court (and only one court on appeal) would determine all five claims. This would eliminate the possibility of inconsistent decisions unless they really were mandated by the different national laws' approaches to Article 69 EPC and the Protocol.

Accordingly, the Court declined to stay the pan-European infringement claims on the grounds of forum non conveniens on the basis that it had not been demonstrated that the courts of France, Germany, Italy and Spain were the appropriate fora for the trial of Actavis' claims in relation to those national designations of the patent. The Court held that it had not been shown that those courts were clearly or distinctly more appropriate than the English Court.


1 Actavis Group HF v. Eli Lilly& Company [2012] EWHC 3316 (27 November 2012), Arnold J.

2 Section 71 of the Patents Act 1977.

3 Lucasfilm Ltd v Ainsworth [2011] UKSC 39.

4 See Case C-4/03 Gesellschaft für Antriebstechnik mbH & Co KG v Lamellen under Kupplungsbau Beteilungs KG [2006] ECR I-6523 at paragraph 16.

5 Article 8(1) of European Parliament and Council Regulation 864/2007/ EC of 31 July 2007 on the law applicable to non-contractual regulations.

Previously published on 3 December 2012.

Visit us at

Mayer Brown is a global legal services provider comprising legal practices that are separate entities (the "Mayer Brown Practices"). The Mayer Brown Practices are: Mayer Brown LLP and Mayer Brown Europe – Brussels LLP, both limited liability partnerships established in Illinois USA; Mayer Brown International LLP, a limited liability partnership incorporated in England and Wales (authorized and regulated by the Solicitors Regulation Authority and registered in England and Wales number OC 303359); Mayer Brown, a SELAS established in France; Mayer Brown JSM, a Hong Kong partnership and its associated entities in Asia; and Tauil & Chequer Advogados, a Brazilian law partnership with which Mayer Brown is associated. "Mayer Brown" and the Mayer Brown logo are the trademarks of the Mayer Brown Practices in their respective jurisdictions.

© Copyright 2012. The Mayer Brown Practices. All rights reserved.

This Mayer Brown article provides information and comments on legal issues and developments of interest. The foregoing is not a comprehensive treatment of the subject matter covered and is not intended to provide legal advice. Readers should seek specific legal advice before taking any action with respect to the matters discussed herein.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.