Chugai Pharmaceutical Co Ltd v UCB Pharma SA

Chugai Pharmaceutical Co Ltd v UCB Pharma SA

The English court has jurisdiction to determine contractual disputes regarding royalty obligations and scope of claims under a foreign patent licence, even if validity is incidentally considered, provided the parties have agreed to English jurisdiction and do not seek to invalidate the foreign patent. The rule in Moçambique and act of state doctrine do not bar such claims.

Parties
Claimant/respondent: Chugai Pharmaceutical Co. Ltd; Defendant/applicant: UCB Pharma S.A.; Defendant/applicant: Celltech R&D Limited; Defendant/respondent: UCB Biopharma SPRL
Jurisdiction
England and Wales
Judgment Date
26 May 2017
Procedural Posture
Patents Court Application / Ruling on Application to Strike Out Paragraphs and for Summary Judgment
Outcome
Application dismissed
Legal Topics
Patent Licence Interpretation, Jurisdiction Over Foreign Patents, Moçambique Rule, Act of State Doctrine, Royalty Obligations
Intellectual Property Contract Law Conflict of Laws Patent Licence Interpretation Jurisdiction Over Foreign Patents Moçambique Rule Act of State Doctrine Royalty Obligations

Case Brief

Summary, issues, holding and outcome

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Parties

Chugai Pharmaceutical Co. Ltd

Claimant/respondent

UCB Pharma S.A.

Defendant/applicant

Celltech R&D Limited

Defendant/applicant

UCB Biopharma SPRL

Defendant/respondent

Procedural Posture

Patents Court Application / Ruling on Application to Strike Out Paragraphs and for Summary Judgment

Legal Issues

  1. 1 Whether the English court has jurisdiction to determine contractual disputes involving scope and validity of foreign patents
  2. 2 Whether the rule in Moçambique and the act of state doctrine bar adjudication of validity issues relating to foreign patents
  3. 3 Whether Chugai's claim constitutes a challenge to the validity of the US patent

Ratio Decidendi

The English court has jurisdiction to determine contractual disputes regarding royalty obligations and scope of claims under a foreign patent licence, even if validity is incidentally considered, provided the parties have agreed to English jurisdiction and do not seek to invalidate the foreign patent. The rule in Moçambique and act of state doctrine do not bar such claims.

Court Disposition

Application dismissed

Orders

  • UCB's applications to strike out the Disputed Paragraphs and for summary judgment are dismissed.
  • English court retains jurisdiction over the issues raised by the Disputed Paragraphs.