Lilly & Company v Human Genome Sciences Inc [2012] EWHC 2290 (Pat) (03 August 2012)

Lilly & Company v Human Genome Sciences Inc [2012] EWHC 2290 (Pat) (03 August 2012)

The court has jurisdiction to grant declaratory relief and should allow the action to proceed. The SPC Regulation permits patent holders to rely on marketing authorisations granted to unconnected third parties. The specification issue is unclear under EU law and requires a reference to the ECJ, but such reference should only be made on established facts after trial.

Citation
[2012] EWHC 2290 (Pat)
Parties
Claimant: Eli Lilly and Company; Defendant: Human Genome Sciences Inc.
Jurisdiction
England and Wales
Judgment Date
03 August 2012
Procedural Posture
Patent Declaratory Relief and Strike Out Application / Interlocutory Judgment on Applications for Immediate Reference to ECJ and Strike Out
Outcome
Applications for immediate reference to ECJ and strike-out denied; action allowed to proceed.
Legal Topics
Supplementary Protection Certificates, Patent Specification, Declaratory Relief, Strike Out Procedure
Intellectual Property Pharmaceutical Law European Union Law Supplementary Protection Certificates Patent Specification Declaratory Relief Strike Out Procedure

Case Brief

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Parties

Eli Lilly and Company

Claimant

Human Genome Sciences Inc.

Defendant

Procedural Posture

Patent Declaratory Relief and Strike Out Application / Interlocutory Judgment on Applications for Immediate Reference to ECJ and Strike Out

Legal Issues

  1. 1 Whether a patent holder can obtain an SPC based on a marketing authorisation granted to an unconnected third party
  2. 2 Whether the patent specification sufficiently identifies the product for SPC purposes
  3. 3 Whether the claim for declaratory relief should be struck out as premature or hypothetical

Ratio Decidendi

The court has jurisdiction to grant declaratory relief and should allow the action to proceed. The SPC Regulation permits patent holders to rely on marketing authorisations granted to unconnected third parties. The specification issue is unclear under EU law and requires a reference to the ECJ, but such reference should only be made on established facts after trial.

Court Disposition

Applications for immediate reference to ECJ and strike-out denied; action allowed to proceed.

Orders

  • No immediate reference to ECJ; reference to be considered after trial if necessary.
  • Strike-out application dismissed; action to proceed to trial.