Today, the Court of Appeal has upheld Arnold J's first instance decision that the English court has jurisdiction to hear actions of non-infringement concerning the national French, German, Italian and Spanish counterparts of EP 1 313 508 (for permetrexed dissodium in combination with vitamin B12 or pharmaceutical derivatives thereof)1.
The decision means that the English court can make a non-infringement determination in respect of these patents at trial in respect of Actavis's proposed dealings in permetrexed dipotassium.
Furthermore, for each counterpart of the EP that the English court determines is not infringed under the respective national laws of infringement, including claim construction, it is prepared to make a (cross-border) declaration of non-infringement.
The result will be seen as a potential boon by those seeking to avoid the need for parallel actions in each European country where a declaration of non-infringement is sought. Nonetheless, the willingness of the English court to entertain applications for cross-border declarations is limited to the following circumstances:
- The patentee must be either domiciled in the UK, or outside the EU;
- The claim must be validly served; and
- Validity will not be challenged in the proceedings.
If the foreign patentee has a place of business in the UK (as Lilly, which though domiciled in the US, was held to have in this case), service can be effected there under English court rules. Otherwise, another point that arises from the case is that patentees should take care before consenting to service of claims for such declarations to ensure that their consent only applies to the UK patent designation.
It should be noted also that, in the UK, it is possible under the court's inherent jurisdiction (and as far as UK rights are concerned, under the Patents Act) to initiate declaratory actions without there being an assertion by the patentee. This is not the case in some other countries.
The decision presents the closest to a form of cross-border declaration available in the UK courts under the present system. Under the current draft rules of the UPC, however, it is proposed that pan-European declarations of non-infringement could be brought in the central division of the UPC in the absence of any assertion by the patentee. It should, however, be remembered that such an action will be stayed if the patentee within three months brings an infringement action in a local or regional division of the UPC.
1) In joined cases Actavis Group HF v Eli Lilly and Company and Medis EHF v Eli Lilly and Company  EWCA Civ 517.
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