High Court of Ireland Decisions

1. This is a motion by GD Searle & Company and the Monsanto Company (herein called the “Respondents”) for an Order staying a petition by Merck and Co. Inc., and Merck Sharpe and Dohme (Ireland) Limited (herein called “the Petitioners”) which Petition seeks the revocation of Irish Patent No. E 77480 (herein called “the Irish Patent”) pursuant to the provisions of the Patents Act, 1992. The Irish Patent derives from European Patent No. EPO679157B (herein called “the European Patent), and the stay is sought pending the final determination of opposition proceedings in relation to the European Patent before the European Patent Office.

2. The European Patent was granted on 19th November, 1997 with Ireland as one of the designated countries, thereby creating the Irish Patent as a National Patent. On 10th August, 1998 the Petitioner filed opposition proceedings in the European Patent Office seeking to revoke the European Patent and these proceedings were determined on 23rd March, 2000 by a decision of the European Patent Office permitting certain amendments to the patent and refusing to revoke the patent as amended. This decision has been appealed and the appeal is pending.

3. In this jurisdiction the petition to revoke the Irish Patent, namely these proceedings, were commenced on 30th July, 1998 and on 19th July, 1999 the Respondents applied to amend the Irish Patent. Also in July 1999 certain directions were given for the trial of the issues under the petition, including an Order for Discovery. The Petitioner has brought an application for further and better discovery, which has been adjourned pending the outcome of this application. This motion to stay the proceedings was brought by Notice of Motion dated 8th January, 2001.

4. It is also perhaps relevant that in the United Kingdom, which was also one of the designated countries under the European Patent, the Respondents have commenced infringement proceedings against the Petitioner on 13th March, 1998 and on 12th March, 1999 the Respondents applied to amend the patent in the United Kingdom. The Petitioners counterclaimed in the infringement proceedings for revocation of the patent and by an Order of 4th February, 2000 the United Kingdom Court revoked the patent. This decision is under appeal in the United Kingdom. It is of note that no application was made in the United Kingdom for a stay pending the determination of the European Patent Office opposition.

5. The present position in relation to the Irish proceedings is that the pleadings have been closed, and discovery has been made by the Respondents, which discovery was in fact identical to that made in the United Kingdom proceedings. However, there is a motion for further and better discovery pending which, if allowed, will necessitate considerable further discovery before the case can proceed. If no stay is granted these proceedings would probably be heard in the High Court in 15 to 18 months time, and if appealed to the Supreme Court would probably be heard after a further period of about 15 months. Thus finality would be achieved in 2 ½ to 3 years. There is some dispute and doubt as to the length of time it will take for the appeals in the European Patent Office to be heard, but it seems the likelihood would be something in the region of 3 to 4 years.

6. There have been a number of recent decisions in the United Kingdom in similar circumstances. The general principle to be applied is probably best set out in the judgment of Aldous L. J. in the Court of Appeal in Beloit Technologies Inc. and Another -v- Valmet Paper Machinery Inc. and Another (1997) RPC 489, where he said at page 503:-

7. It should be noted that the delays in the European Patent Office are considerably less than they were in 1997 when that judgment was given.

8. However, later on in the judgment he clearly stated that the preferred option was to stay the proceedings. In what is I think the most recent case, namely Unilever Plc -v- Frisa N.V .(2000) F.S.R. 708 Laddie J., commenting on the last case, said at page 712:-

9. Later on in the same case at p. 716 he said:-

10. I have also been referred by analogy to the position which may arise in relation to disputes under Articles 81 and 82 (formerly Articles 85 and 86) of the EC Treaty. In that regard, the European Court in a judgment given on 14th December, 2000 in Master Foods Limited -v- HB Ice Cream Limited , which was a reference from the Supreme Court, expressed its view at paragraph 57 of the decision:-

11. From the authorities I am quite satisfied that prima facie a stay should be granted in cases such as this. I appreciate the point made by the Petitioners that the European Patent Convention is not a Treaty concerned with a harmonisation of substantive patent law and procedure, and relates only to the grant of patents, but nevertheless it is an international convention setting up a patents office the decisions of which can determine the grant of a patent in this jurisdiction. As the State has recognised the right of the European Patent Office to determine applications for the grant of a patent which will extend to this jurisdiction, including the right to allow amendments to and to hear objections in relation to such patent, it would seem somewhat illogical, unless there was very good reason, for revocation proceedings to be heard in this country before the final determination of the existence and form of the patent by the European Patent Office.

12. In considering whether to grant a stay, therefore the Court must start with the premise that if possible it should be granted, and then consider whether there are reasons why it should be refused. In this case the Petitioners make a number of points.

13. Firstly, the Respondents are not in fact using the patent at all in this jurisdiction, while the Petitioners have a product on the Irish market which is alleged to infringe the patent. The Respondent has offered an undertaking in the following terms:

14. The Petitioners claim that this is of little practical use because the Respondents have instituted infringement proceedings in relation to the same product in the Netherlands, and if they obtain an Order there, under the Brussels Convention they would be able to enforce that order in this jurisdiction. However, it seems probable that it would be some considerable length of time before there is any final determination of those proceedings in the Netherlands.

15. The Petitioners also point to the fact that if the stay is granted, pending the decision of the European Patent Office there will be a patent in force in Ireland in its un-amended form, which includes claims which are far wider than those which are likely to be allowed by the European Patent Office, even if the patent is upheld. This is certainly a consideration, in that it seems very probable that the Respondents would then have the benefit of a monopoly for 3 or 4 more years to which they almost certainly are not entitled. This is quite rightly put forward as being a matter of public interest rather than simply an inter partes matter. They also say that there is a detriment to the Petitioners themselves in that they have a manufacturing plant in this country, but it would be commercially undesirable for them to use that plant to manufacture a product which might infringe the patent as long as the question is in doubt, and therefore the stay should be refused so that there could be the earliest possible determination of the validity of the patent.

16. Against these arguments must be weighed the costs of duplication and the undesirability of conflicting decisions.

17. There is no doubt that if both proceedings continue in parallel, and the ultimate decision is the same in both proceedings, then there will have been a very considerable waste of time and money. Similarly, if the European Patent Office ultimately allows the opposition and rejects the patent, then that decision will be binding in this jurisdiction and the Irish proceedings will again have been a waste of time and money, whatever may have been the decision here. On the other hand, if the European Patent Office decides to grant the patent, and the Irish Court revokes it, the effect is the patent would not be in force in Ireland, but would be in force in the other nominated countries under the convention. The Respondents suggest that this in itself would be an undesirable outcome.

18. I am left in the unenviable position of having to try to balance these arguments one against the other and determine whether, on the facts of this particular case, the scales are sufficiently weighted in favour of the Petitioner so as to outweigh the basic preference for granting a stay. On balance, I have come to the conclusion that the arguments put forward by the Petitioner are not sufficient to achieve this, and accordingly, subject to the undertaking which is being proposed, I will grant a stay on these proceedings pending the ultimate decision of the European Patent Office. However, as this is dependent to some degree on an estimation of future events, I will expressly allow the Petitioner liberty to apply to lift the stay in the event of some material alteration in the circumstances.