Arrow Declarations - Part III

This article is the third in a series. The background to this article can therefore be found in Part I and Part II.

The High Court has now proceeded to full trial, following on from the guidance of the Court of Appeal that stated Arrow Declarations were to be issued only in exceptional circumstances and not merely as a means to determine whether it is likely that a pending application will lead to a valid, granted patent.

Background

For more information on Arrow Declarations, please read Part I and Part II of this series of articles. In September 2016, Mr Justice Arnold refused to strike out Fujifilm's request for an Arrow Declaration, at the request of AbbVie, based on bad faith acts carried out by AbbVie in previous proceedings before the UK Courts. AbbVie appealed this decision and took further steps in an attempt to avoid the scheduled trial. Nevertheless, the Court of Appeal dismissed Abbvie’s arguments, noting that no basis in either the UK Patents Act or the EPC precluded the Courts from issuing such declarations.

Decision

The High Court has now proceeded to full trial, following on from the guidance of the Court of Appeal that stated Arrow Declarations were to be issued only in exceptional circumstances and not merely as a means to determine whether it is likely that a pending application will lead to a valid, granted patent.

It was evident to the Court that AbbVie's previous attempts to "hide" various applications amounted to exceptional circumstances. The Claimants successfully argued that AbbVie had delayed proceedings for as long as possible, whilst threatening to sue for infringement, and then abandoned their patent rights at the last moment, before filing further divisional applications with highly similar claimed content.

The Claimants speculated that Abbvie’s “strategy” was designed to encourage market uncertainty, whilst protecting AbbVie’s patent portfolio. Mr Justice Carr agreed, noting that "AbbVie has abandoned all relevant UK patent protection in order to avoid scrutiny by the UK Courts and to prolong commercial uncertainty as to the validity of those patents".

Abbvie unsuccessfully argued (with regard to the declarations) that since there would never be any UK patent claims to the subject matter in question, it would be wrong in principle, and would not serve a useful purpose, to make the declarations. Nevertheless, the Court refused to accept this, as no supporting evidence was presented and the previously filed witness statement had been withdrawn.

An Arrow Declaration was granted by the Court but noted to be very much a discretionary remedy, as the facts of the case were extreme. Accordingly, Fujifilm’s biosimilar will not infringe any valid patent in the UK that has an effective date on or later than one of AbbVie’s divisional applications.