Glaxo Group Ltd v Genentech Inc & Anor

Glaxo Group Ltd v Genentech Inc & Anor

The risk of duplication of proceedings is inherent in the EPC regime and does not, without more, justify a stay of national proceedings. The most significant factor is the time to achieve commercial certainty. Where national proceedings will resolve the issue significantly sooner than the EPO, it is proper to refuse a stay. The judge correctly balanced the factors and there was no error of legal principle; thus, the appeal should be dismissed.

Parties
Claimant/respondent: Glaxo Group Limited; Defendant/appellant: Genentech Inc; Defendant/appellant: Biogen Idec Inc
Jurisdiction
England and Wales
Judgment Date
31 January 2008
Procedural Posture
Civil Appeal Patents / Appeal From High Court (patents Court) Decision Refusing Stay of Revocation Proceedings
Outcome
Appeal dismissed
Legal Topics
Stay of Proceedings, Parallel Proceedings, Patent Revocation, Forum Non Conveniens, Judicial Discretion
Intellectual Property Law Civil Procedure Stay of Proceedings Parallel Proceedings Patent Revocation Forum Non Conveniens Judicial Discretion

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Parties

Glaxo Group Limited

Claimant/respondent

Genentech Inc

Defendant/appellant

Biogen Idec Inc

Defendant/appellant

Procedural Posture

Civil Appeal Patents / Appeal From High Court (patents Court) Decision Refusing Stay of Revocation Proceedings

Legal Issues

  1. 1 In what circumstances should the Patents Court exercise its inherent power to stay revocation proceedings pending the outcome of opposition proceedings in the European Patent Office (EPO)?
  2. 2 Should the Court of Appeal interfere with the judge’s discretion in refusing a stay of revocation proceedings?

Ratio Decidendi

The risk of duplication of proceedings is inherent in the EPC regime and does not, without more, justify a stay of national proceedings. The most significant factor is the time to achieve commercial certainty. Where national proceedings will resolve the issue significantly sooner than the EPO, it is proper to refuse a stay. The judge correctly balanced the factors and there was no error of legal principle; thus, the appeal should be dismissed.

Court Disposition

Appeal dismissed

Orders

  • Stay of revocation proceedings refused
  • GSK permitted to proceed with revocation action in the Patents Court