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Commercial declarations if useful and serve justice: Court of Appeal.

Fujifilm Kyowa Kirin Biologics Co Ltd v Abbvie Biotechnology Limited

Court of Appeal confirms Arrow declarations.

The Court of appeal has confirmed that Arrow declarations are available to pronounce on the validity of an application for a patent despite the Patent Act being a code and containing statutory remedies. In doing so, the court commented generally on the principles of declarations in commercial disputes, particularly where a statutory remedy is theoretically available.

In Fujifilm Kyowa Kirin Biologics Co Ltd v Abbvie Biotechnology Limited & Anor [2017] FICR 2; [2017] EWCA Civ 1, the court said at [59] that declaratory relief in commercial disputes should not be constrained by artificial limits wrongly related to jurisdiction. Instead it should be kept in proper bounds by the exercise of the court’s discretion. When considering granting a declaration, the court should take into account justice to the claimant, justice to the defendant, whether the declaration would serve a useful purpose and whether there are any other special reasons. It is no longer necessary to have a "claim of right", but its existence is relevant.

If a statutory remedy is available, it should be pursued rather than a declaration unless it is not presently available in the circumstances, is being frustrated or does not provide the relief the claimant needs. A declaration may be refused if it is a collateral attack or a disguised challenge which should be mounted by way of the statutory remedy. The eventual avilability of the statutory remedy may be relevant to the question of whether a declaration should be granted in the exercise of the court’s discretion

The appellants applied for a patent and, before the patent was granted, the respondents sought a declaration under Civil Procedure Rule 40.20 that the product, process or use in the patent was old or obvious at a particular date in accordance with Arrow Generics Limited v Merck & Co. Inc. [2007] EWHC 1900 (Pat).

Section 74 of the Patents Act 1977 (UK) strictly limited the situations in which the validity of patents could be “put in issue”, which did not include such a declaration. Section 72 provided the only grounds on which granted patents could be revoked.

The appellants unsuccessfully applied to the Patents Court for the proceedings to be struck out, from which they appealed, arguing that Arrow Generics was wrongly decided, that s 74 precluded the declaration from being made because it put the validity of a patent in issue, that revocation under s 72 provided a statutory remedy, and that the Court of Appeal should not rule on the principles involved since this was merely an appeal from a refusal to strike out proceedings in which the issue was only whether the case was arguable.