Arrow Declarations post Actavis v Eli Lilly

27.10.2017

An issue which has been the subject of much discussion since the judgment of the Supreme Court in Actavis v Eli Lilly[2017] UKSC 48 is what this means for Arrow Declarations. In Fujifilm v AbbVie [2017] EWCA Civ 1, the Court of Appeal had held that the English Court does have jurisdiction to grant such declarations, but had held that it will depend on the circumstances of each case whether such a declaration is appropriate. At the subsequent trial in Fujifilm v AbbVie([2017] EWHC 395 (Pat)), Henry Carr J then considered the relevant factors and held that on the facts of that case, a declaration should be granted.
This can now be contrasted with the approach of Arnold J in Generics (UK) Ltd v Yeda [2017] EWHC 2629 (Pat), handed down on 26 October 2017. Despite finding the patent to be obvious, despite there being two pending divisionals which also cover the relevant regimen, and despite the patentee having made public statements to the effect that it plans to enforce its patent portfolio, Arnold J held that on the facts of this case the reasoned judgment he had provided was sufficient for the Claimants and therefore declined to grant the declaration. In particular, he noted that he did not consider an Arrow declaration would provide the Claimants with greater certainty than the reasoned judgment, and the Claimants could not explain satisfactorily why an Arrow declaration would in this case have any greater persuasive value than a reasoned judgment.
This confirms that whilst Arrow Declarations are a possible remedy which can be sought in the UK, they are not something that the Court will grant lightly.