Neurim Pharmaceuticals (1991) Limited & Anor. v Generics (UK) Limited & Anor.

Neurim Pharmaceuticals (1991) Limited & Anor. v Generics (UK) Limited & Anor.

Flynn Pharma Limited was an exclusive licensee under EP702 within the meaning of the Patents Act 1977, as the licence conferred exclusive rights to distribute the product in the UK and Ireland, and the inability to sue independently did not negate exclusivity. The judge erred in principle in his approach to costs; after the EPO revoked the patent, both parties were equally at fault for not seeking an adjournment, and the costs of the English proceedings after 3 June 2020 were wasted. The correct order was that Mylan should pay the Claimants’ costs of the exclusive licence issue and otherwise there be no order as to costs below.

Parties
Claimant/appellant: Neurim Pharmaceuticals (1991) Limited; Claimant/appellant: Flynn Pharma Limited; Defendant/respondent: Generics (UK) Limited; Defendant/respondent: Viatris UK Healthcare Limited
Jurisdiction
England and Wales
Judgment Date
29 March 2022
Procedural Posture
Civil Appeal / Court of Appeal Judgment on Appeal From High Court (patents Court)
Outcome
Appeal allowed on both the exclusive licence and costs issues.
Legal Topics
Patents, Exclusive Licence, Costs Orders, Infringement Proceedings
Intellectual Property Law Civil Procedure Patents Exclusive Licence Costs Orders Infringement Proceedings

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 3 Authorities cited 9 Party arguments 2 Amounts and remedies 1
Sign in to unlock

Parties

Neurim Pharmaceuticals (1991) Limited

Claimant/appellant

Flynn Pharma Limited

Claimant/appellant

Generics (UK) Limited

Defendant/respondent

Viatris UK Healthcare Limited

Defendant/respondent

Procedural Posture

Civil Appeal / Court of Appeal Judgment on Appeal From High Court (patents Court)

Legal Issues

  1. 1 Whether Flynn Pharma Limited was an exclusive licensee under EP702 and had standing to sue for infringement
  2. 2 Whether the judge was correct to order the Claimants to pay Mylan’s costs after the patent was revoked by the EPO

Ratio Decidendi

Flynn Pharma Limited was an exclusive licensee under EP702 within the meaning of the Patents Act 1977, as the licence conferred exclusive rights to distribute the product in the UK and Ireland, and the inability to sue independently did not negate exclusivity. The judge erred in principle in his approach to costs; after the EPO revoked the patent, both parties were equally at fault for not seeking an adjournment, and the costs of the English proceedings after 3 June 2020 were wasted. The correct order was that Mylan should pay the Claimants’ costs of the exclusive licence issue and otherwise there be no order as to costs below.

Court Disposition

Appeal allowed on both the exclusive licence and costs issues.

Orders

  • Mylan to pay the Claimants’ costs of the exclusive licence issue.
  • Otherwise, no order as to the costs below.