Fujifilm Kyowa Biologics Co Ltd v Abbvie Biotechnology Ltd (Rev 1)

Fujifilm Kyowa Biologics Co Ltd v Abbvie Biotechnology Ltd (Rev 1)

The UK court has jurisdiction to grant a declaration that FKB's biosimilar product was obvious or anticipated at the relevant priority dates, as section 74 of the Patents Act 1977 does not bar such relief in respect of published applications. The declaration serves a useful purpose by dispelling commercial...

Source-derived case information.

Parties
Claimant: FUJIFILM KYOWA BIOLOGICS CO., LTD.; Defendant: ABBVIE BIOTECHNOLOGY LIMITED
Jurisdiction
England and Wales
Judgment Date
01 March 2016
Procedural Posture
Patent Revocation and Declaratory Relief / Ruling on Amendment and Strike Out Applications
Outcome
Application to strike out dismissed; amendments allowed.
Legal Topics
Patent Validity, Declaratory Relief, Jurisdiction, European Patent Convention, Patent Infringement, Patent Opposition, Patent Divisionals
Intellectual Property Patent Law Patent Validity Declaratory Relief Jurisdiction European Patent Convention Patent Infringement Patent Opposition +1 more

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Parties

FUJIFILM KYOWA BIOLOGICS CO., LTD.

Claimant

ABBVIE BIOTECHNOLOGY LIMITED

Defendant

Procedural Posture

Patent Revocation and Declaratory Relief / Ruling on Amendment and Strike Out Applications

Legal Issues

  1. 1 Whether the UK court has jurisdiction to grant a declaration of obviousness/anticipation regarding FKB's biosimilar product in light of pending divisional patent applications by AbbVie
  2. 2 Whether section 74 of the Patents Act 1977 bars such declaratory relief
  3. 3 Whether the declaration sought constitutes an impermissible pre-grant opposition

Ratio Decidendi

The UK court has jurisdiction to grant a declaration that FKB's biosimilar product was obvious or anticipated at the relevant priority dates, as section 74 of the Patents Act 1977 does not bar such relief in respect of published applications. The declaration serves a useful purpose by dispelling commercial uncertainty and is justified by the unusual facts, including AbbVie's conduct and the substantial commercial stakes. The application to strike out is dismissed and FKB's amendments are allowed.

Court Disposition

Application to strike out dismissed; amendments allowed.

Orders

  • FKB's amendments to the Claim Form and Particulars of Claim are allowed.
  • AbbVie's application to strike out is dismissed.