Transferring Cases to the Patents Court?

September 2015

Medical Research Council v Celltech R&D Limited

This case relates to an application by the defendant, Celltech, to transfer a claim for royalties under a licence agreement to the Patents Court from the general list of the Chancery Division.  It is of interest as it considers whether any case relating to patents should be transferred. 

The licence agreement related to a number of patents and applications in the UK, Europe, Canada, USA and Japan directed towards recombinant antibodies and methods for their production. Celltech had granted a sub-licence to Genentech Inc. Roche and Novartis were alleged to be licensees of Genentech and to have produced antibody products (Avastin and Lucentis) which were covered by the licence.

Celltech argued that there were a number of matters of construction of the licence agreements, foreign patent law and the patents as well as case management issues which would be more easily determined by a judge of the Patents Court. The claimant took the view no positive case that the relevant products did not fall within the claims of the patents had been advanced and that the court should not conclude that there was bound to be, or even necessarily likely to be, a technical dispute. Therefore, the claimant considered that there was no need to transfer the case at this time.

The judge agreed with the claimant on this point. He considered that it was far from obvious that the defendant would run a case that the products fell outside the claims of the patents. Therefore, he concluded that it was, prima facie, inappropriate to require the matter to proceed in the Patents Court. He also considered that whilst the issues of construction may be easier to be dealt with by a patent judge:

It does not seem to me that that consideration by itself is sufficient to justify the order which is sought. It is the daily experience of those who practise in this Division that judges sometimes have an extensive familiarity with a particular type of commercial document and sometimes they have little or none. Just as Arnold J is quite competent to construe a pension scheme when he has to (see the IMG case), so I am sure that other judges of this Division are quite competent to construe a licence which, in the end, is simply a permission to do something. It does not require a level of technical expertise such as would be required to decide a patent action.

Accordingly, Nugee J considered that it was not necessary or appropriate to transfer the case to the Patents Court at this stage.

The claimant also raised a question of jurisdiction, arguing that the Patents Court only had jurisdiction over the specific claims listed at CPR 63.2(1), namely:

63.2(1)

(1)This Section applies to –

(a) any claim under –

(i) the 1977 Act;

(ii) the Registered Designs Act 1949;

(iii) the Defence Contracts Act 1958; and

(b) any claim relating to –

(i) Community registered designs;

(ii) semiconductor topography rights; or

(iii) plant varieties.

The judge noted that if this list were exhaustive, it would result in seriously inconvenient practical consequences.  Therefore, he concluded:

In my judgment, s.62(1) [of the Senior Courts Act] does not preclude the Patents Court from taking such other proceedings as may be appropriate to be heard. What it does is it sets out the central business of the Patents Court, and when read with CPR 63.2, the combination provides that certain claims must be started in the Patents Court, but they do not, taken together, preclude other appropriate claims from being started in or transferred to the Patents Court.

[2015] EWHC 2139 (Ch)