The English High court has exercised jurisdiction in relation to foreign designations of a European patent. Arnold J gave a lengthy judgment of 376 pages, for which he made no apology, in the action between Actavis and Eli Lilly (Actavis UK Ltd & Ors v Eli Lilly & Company  EWHC 1511 (Pat)). While there were a significant number of issues between the parties, the validity of the patent was not contested.
Actavis, a generic pharmaceutical company, had sought declarations of non-infringement in relation to the UK, French, Italian and Spanish designations of Eli Lilly’s European patent for an anti-cancer drug. The Court, in applying English law, held that they were entitled to such declarations despite the challenge made by Eli Lilly that the English court did not have jurisdiction over the foreign designations.
Eli Lilly had argued that the law applicable in relation to the foreign patents was the specific country in question in accordance with Article 15 of the Rome II Regulation which refers to the scope of the law applicable. Actavis argued that the rules regarding declarations of non-infringement were matters of procedure and as such fell outside the scope of the Regulation.
Arnold J examined a large amount of foreign law expert evidence and held that it was in fact a question of procedure and according exercised its jurisdiction in making the declarations of non-infringement. In concluding it was held that even if French, Italian and Spanish law was the applicable law respectively, Actavis were entitled to a declaration of non-infringement in respect of the French, Italian and Spanish designations of the Patent.
The making or refusal of a declaration of non-infringement in the case of a patent does not imply that the patent is in fact valid and accordingly this judgment will allow parties to bring proceedings relating to multiple designations of European patents in one court, where validity is not at issue.