The claimants, which marketed products for the treatment of chronic lung disease and asthma, brought proceedings against the defendant, the proprietor of five patents relating to the delivery of drugs for treating asthma by inhalation, seeking a declaration that their products did not infringe those patents and revocation of the patents. The defendant counterclaimed, alleging infringement. The claimants amended their particulars of claim to seek in addition a declaration that their processes and products were “obvious” as of the patents’ priority date, or at any date thereafter (“the Arrow declaration”). On the defendant’s application for the application for Arrow relief to be struck out, the claimants contended that they needed such relief because they were concerned that, even if they were successful at the forthcoming trial, the defendant might rely on one or more as yet ungranted patents to allege infringement against the claimants’ products. The judge acceded to the defendant’s application, holding that it was necessary for something more than the existence of pending patent applications to be identified before the court could go on to exercise its discretion to grant such relief.
On the claimants’ appeal—
Held, appeal allowed. The jurisdiction to grant an Arrow declaration was discretionary. Identification of a relevant pending patent application was a necessary but not sufficient condition for an application for Arrow relief. It was necessary to go further and examine whether it would serve a useful purpose. But the discretion to grant Arrow relief was that of the trial judge, not that of the judge hearing an application to strike out an application for such relief. On such a strike-out application, the task which the judge was required to undertake was to determine whether the pleaded facts and arguments gave rise to a realistic claim for Arrow relief which ought to go to trial. In approaching this task at the interim stage one should have in mind that it was the facts and circumstances at the date of the trial which would ultimately be determinative of whether the discretion should be exercised. For similar reasons, it was not sensible to ask, at this stage, whether the facts relied on were sufficiently “unusual” to justify Arrow relief, which would be a particularly difficult test to apply at this interim stage before any facts were found. On the facts, the claimants’ claim that an appropriately worded Arrow declaration ought to be granted was plainly sufficiently realistic at the present stage to be allowed to proceed to trial (paras 24–29, 35, 36).
Justin Turner QC and Geoffrey Pritchard (instructed by Gowling WLG UK llp) for the claimants.
Andrew Lykiardopoulos QC and Anna Edwards-Stuart (instructed by Bristows llp) for the defendant.