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Monday, 25 October 2004


Here's an interesting decision on patents from the Court of Appeal, decided last Thursday. In the latest installment of Celltech R&D Ltd v Medimmune Inc [2004] EWCA Civ 1331. Medimmune was appealing against the refusal of its application for a stay of Celltech's action against it. Celltech and Medimmune were party to patent licence under which Medimmune agreed to pay royalties for products sold or manufactured that would, but for the licence granted, infringe Celltech's "Adair" patents. Clause 13 of the agreement conferred jurisdiction relating to liability issues upon the English courts. Celltech subsequently alleged that Medimmune infringed its US "Adair 2" patent when it made and sold its Synagis treatment for respiratory tract infection in the US and sought royalties under the licence agreement, whereupon Medimmune commenced US proceedings for declarations that US Adair 2 was invalid and that Synagis did not infringe it.

Celltech, having applied to the US court to decline jurisdiction over the claim for a declaration of non-infringement, then sued Medimmune in England, while Medimmune applied for a stay of the English proceedings pending the outcome of the US action. Mr Justice Laddie, ruling that the licence agreement conferred jurisdiction on the English courts, refused to stay the English proceedings.

The Court of Appeal has now dismissed Medimmume's appeal. In its view Clause 13 conferred jurisdiction to determine issues relating to the performance of the agreement upon the English courts, which would have no difficulty in applying the appropriate foreign law in respect of the scope of a foreign patent. The commercial basis of clause 13 was to select a jurisdiction with a specialist, experienced court that could determine all issues of infringement in relation to patents from many different jurisdictions.

The IPKat cannot fault the Court of Appeal's logic. The choice of a single arbitrary locus for patent dispute litigation adds a dose of practical reality and certainty to the dispute resolution process which, if respected by the parties, should save time, trouble, effort and money. It's good to see exclusive jurisdiction clauses enforced in situations such as this.

Other English courts that are less often invoked for dispute resolution purposes here, here and here

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