staying patent actions pending outcome of EPO opposition proceedings

The circumstances in which UK patent actions will be stayed pending resolution of European Patent Office (EPO) opposition proceedings have been considered again in two cases before the High Court*. In both, a stay was refused, notwithstanding offers of extensive undertakings by the parties seeking a stay.

background

When a European patent has been granted, and corresponding national patents issued, the central patent can still be challenged in opposition proceedings before the EPO. Because these can take years to be determined, the question arises whether actions brought in respect of national patents should be stayed.

In some European countries, revocation proceedings brought in the national Courts will be stayed pending resolution of EPO opposition proceedings. In others, such as the UK, a stay is not automatic.

the cases

In Baxter v Bayer, Baxter failed in EPO opposition proceedings and appealed. Before the appeal had been determined, it brought proceedings before the UK Court for a declaration of non-infringement. Bayer applied for a stay.

Mr Justice Pumfrey asked the question that had been asked by Laddie J. in a number of cases: whether, on balance, a stay is in the interests of justice. He concluded that, here, the potential waste of costs was not disproportionate to the desirability of certainty for Baxter, in the face of an opposition that had failed and may fail again on appeal.

In the GlaxoSmithKline (GSK) case, in which Rouse Legal is representing GSK, GSK is opposing Sanofi’s patent at the EPO. It also applied to revoke the UK part of the patent. Sanofi sought to stay that action pending resolution of the EPO opposition.

Mr Justice Kitchin set out the legal principles: while there is a presumption in favour of a stay, it is for the Court to see where justice lies. Applying these principles to the facts, he decided in favour of allowing the case to continue. In so doing, he was influenced by the fact that opposition proceedings were at a relatively early stage, and that the action concerned a major new vaccine product with considerable market potential. He concluded that allowing the action to proceed would help remove uncertainty from a UK product launch and serve to inform the parties, thereby enabling them more readily to resolve the dispute.

our comment

These cases do not change the legal principles established in earlier cases. They do, however, provide interesting illustrations of the application of those principles, making it clear that although, in the UK, there is a presumption in favour of a stay, a stay will not be granted if, in the circumstances, it would be contrary to the interests of justice.

*Baxter & Ors v Bayer Corporation & Ors and GlaxoSmithKline Biologicals SA v Sanofi Pasteur SA.