Merck Canada Inc & Anor v Sigma Pharmaceuticals Plc

Merck Canada Inc & Anor v Sigma Pharmaceuticals Plc

The Court of Appeal found the interpretation of the Specific Mechanism, including the need for the patent holder to demonstrate intention to enforce, the sufficiency and recipient of notification, and the effect of estoppel, were not acte clair and required a reference to the Court of Justice. The judge below was entitled to order delivery up/destruction of infringing goods, assuming infringement was established.

Parties
Claimant/respondent: Merck Canada Inc; Claimant/respondent: Merck Sharp & Dohme Ltd; Defendant/appellant: Sigma Pharmaceuticals plc
Jurisdiction
England and Wales
Judgment Date
18 April 2013
Procedural Posture
Civil Appeal (intellectual Property/patent) / Court of Appeal Judgment on Appeal From Patents County Court, With Reference to the Court of Justice Pending
Outcome
Reference to the Court of Justice for preliminary ruling; no final determination of appeal pending CJEU decision.
Legal Topics
Patent Infringement, Parallel Importation, Supplementary Protection Certificates, Free Movement of Goods, Estoppel, Remedies (delivery Up/destruction)
Intellectual Property Law European Union Law Patent Infringement Parallel Importation Supplementary Protection Certificates Free Movement of Goods Estoppel Remedies (delivery Up/destruction)

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Parties

Merck Canada Inc

Claimant/respondent

Merck Sharp & Dohme Ltd

Claimant/respondent

Sigma Pharmaceuticals plc

Defendant/appellant

Procedural Posture

Civil Appeal (intellectual Property/patent) / Court of Appeal Judgment on Appeal From Patents County Court, With Reference to the Court of Justice Pending

Legal Issues

  1. 1 Proper interpretation of the Specific Mechanism derogation under the 2004 EU Accession Act for pharmaceutical patents
  2. 2 Whether the patent holder must demonstrate intention to enforce rights before importation is infringing
  3. 3 Sufficiency and recipient of notification under the Specific Mechanism

Ratio Decidendi

The Court of Appeal found the interpretation of the Specific Mechanism, including the need for the patent holder to demonstrate intention to enforce, the sufficiency and recipient of notification, and the effect of estoppel, were not acte clair and required a reference to the Court of Justice. The judge below was entitled to order delivery up/destruction of infringing goods, assuming infringement was established.

Court Disposition

Reference to the Court of Justice for preliminary ruling; no final determination of appeal pending CJEU decision.

Orders

  • Reference to the Court of Justice on three groups of questions regarding interpretation of the Specific Mechanism.
  • Order for delivery up/destruction of infringing goods affirmed, subject to outcome of reference.