Arrow Generics Ltd & Anor v Merck & Co, Inc [2007] EWHC 1900 (Pat) (31 July 2007)

Arrow Generics Ltd & Anor v Merck & Co, Inc [2007] EWHC 1900 (Pat) (31 July 2007)

EP(UK) 904 was never granted as GB designation was withdrawn before grant took effect; court has no jurisdiction to declare it invalid or revoke it. However, court has jurisdiction to grant declarations regarding Arrow's product and divisional applications, as such relief is not barred by s.74 Patents Act 1977 and serves a useful commercial purpose.

Citation
[2007] EWHC 1900 (Pat)
Parties
Claimant: Arrow Generics Limited; Claimant: Arrow Pharm (Malta) Limited; Defendant: Merck & Co, Inc
Jurisdiction
England and Wales
Judgment Date
31 July 2007
Procedural Posture
Patent Litigation / Interlocutory Application; Strike Out/amendment Hearing
Outcome
Claims regarding EP(UK) 904 struck out; claims regarding Arrow's product and divisional applications allowed to proceed.
Legal Topics
Declaratory Relief, Patent Validity, Obviousness, Jurisdiction, European Patent Convention, Divisional Applications
Intellectual Property Patent Law Declaratory Relief Patent Validity Obviousness Jurisdiction European Patent Convention Divisional Applications

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Parties

Arrow Generics Limited

Claimant

Arrow Pharm (Malta) Limited

Claimant

Merck & Co, Inc

Defendant

Procedural Posture

Patent Litigation / Interlocutory Application; Strike Out/amendment Hearing

Legal Issues

  1. 1 Whether EP(UK) 904 patent ever existed given withdrawal of GB designation before publication
  2. 2 Whether court has jurisdiction to grant declarations regarding divisional applications and applicant's product

Ratio Decidendi

EP(UK) 904 was never granted as GB designation was withdrawn before grant took effect; court has no jurisdiction to declare it invalid or revoke it. However, court has jurisdiction to grant declarations regarding Arrow's product and divisional applications, as such relief is not barred by s.74 Patents Act 1977 and serves a useful commercial purpose.

Court Disposition

Claims regarding EP(UK) 904 struck out; claims regarding Arrow's product and divisional applications allowed to proceed.

Orders

  • Strike out paragraphs 1 and 2 of claim relating to EP(UK) 904
  • Allow claims for declarations regarding Arrow's product and divisional applications to proceed