ENGLAND / PATENTS / LITIGATION

Staying English patent litigation pending EPO oppositions

Jonathon Radcliffe

IP Litigator, Vol 8 No 10, Nov / Dec 2002

In this article the author brings out the problems arising from national litigation concerning a patent granted by the European Patent Office, when post-grant opposition procedures in the EPO may result in inconsistent findings. English patent procedures tend to favour speedy litigation; but, if the EPO's findings are at variance from a decision already reached in English courts, "this may result in the English courts having to reverse (and unwind the consequences of) [that] decision". Given the time taken by the EPO and the English courts respectively, the proceedings are unlikely to coincide: in the EPO it can take between four and eight years before the opposition procedure and aoll possible appeals are exhausted. The author quotes the record of fourteen years in the case, Biogen Inc v Medeva plc. There is therefore a case for reconsidering the traditional approach of the English courts which, unlike that of their European counterparts, has been not to stay litigation pending the outcome of EPO oppositions. The author's observations are prompted by the decision of the English Court of Appeal in Kimberley-Clark Worldwide Inc v Proctor & Gamble Ltd, which broadly laid down three principles: first, that the preferred option when opposition proceedings are before the EPO must be that the English proceedings are stayed pending resolution of the EPO proceedings; second, that English courts must weigh the injustice that a stay would cause against the desirability of a stay; and, third, that the Court's decisions must be taken in the light of the circumstances of each case. Stays are not necessarily the norm. In 3M v Rennicks (UK) Ltd, a stay was refused when EPO proceedings were expected to continue for at least another four years: "the patentee's inability to enforce its patent until so late until its term was an obvious injustice". The author considers the prejudicial effects which a stay may have on each of the parties, with particular reference to the procedural delays in the EPO; the effects on licensing; commercial uncertainty; the remaining life of the patent; the relative financial positions of the parties; and the possibility that the patentee may give certain undertakings acceptable both to the claimant and to the court. The author concludes that "stays in English patent litigation are now very much a potential tactic for litigants when faced with parallel EPO opposition proceedings". [20081]