In dismissing an appeal against a refusal to stay patent revocation proceedings, the English Court of Appeal has set out useful guidance on the criteria to be applied in determining whether such proceedings before the English courts should be stayed in favor of European Patent Office opposition proceedings. Glaxo Group Limited v. Genentech Inc. and Biogen Idec Inc., [2008] EWCA Civ 23 (Eng. Ct. of Appeal, Jan. 31, 2008) (Mummery, Lord J.).
In order to clear the path for the commercialization of a new product for rheumatoid arthritis, the claimant Glaxo applied to the English Patents Court in February 2007 for revocation of a European patent held by the defendants. Glaxo had previously filed a notice of opposition to the patent at the European Patent Office (EPO) and relied on the same broad grounds of invalidity in both cases. The English trial was set down for February 2008, at which point Genentech applied to stay those proceedings in favor of those at the EPO, arguing that the English proceedings were an abusive duplication of the EPO proceedings.
The court of first instance rejected the application for a stay at first instance on the basis that, as it would take at least another 18 months and perhaps up to three years for the EPO to come to a decision, granting a stay would unduly prejudice Glaxo's commercial interest in launching its new product as soon as possible. Genentech appealed.
The Court of Appeal upheld the first instance decision as a valid exercise of the judge's discretion. In doing so, the Court emphasized that it was legitimate for a party contesting the validity of a European patent to do so both in a revocation action in the English court and by opposition proceedings at the EPO. In contrast to ordinary commercial litigation, no principle of estoppel arose as a result. The most important factor for the court to consider in such circumstances will usually be the length of time for the respective proceedings to achieve some certainty on the issue of the validity of the patent-in-suit, so that business knows where it stands. If the likelihood is that the national proceedings would achieve this resolution significantly sooner that those at the EPO, it would normally be a proper exercise of discretion to decline to stay the national proceedings.
Practice Note: This judgment illustrates the ability of companies seeking to revoke European patents to bring parallel proceedings in the EPO and in the English court. It further reflects that the English courts are sensitive to the interests of those companies engaged in commercialization over those of patentees seeking to delay revocation proceedings.
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