Merck & Company Inc. v G.D. Searle & Company

• Jurisdiction: Ireland
• Judge: Mr.Justice McCracken
• Judgment Date: 14 March 2001
• Neutral Citation: [2001] IEHC 41
• Court: High Court
• Docket Number: [1998 No.,No.8716p/1998
• Date: 14 March 2001

GD SEARLE & CO & MONSANTO CO, IN RE

IN THE MATTER OF IRISH PATENT NO. E77480 FILED ON THE 14TH DAY OF JANUARY 1994 AND NOW REGISTERED IN THE NAME OF GD SEARLE &CO AND THE MONSANTO COMPANY IN RESPECT OF AN ALLEGED INVENTION FOR "NOVEL 3,4 / DIARYL THIOPENES AND ANANLOGS THEREOF HAVING USE AS ANTI-INFLAMMATORY AGENTS.

AND

IN THE MATTER OF THE PATENTS ACT 1992

[2001] IEHC 41

No.8716p/1998

THE HIGH COURT

Synopsis:

INTELLECTUAL PROPERTY

Patents

Application to stay revocation of patent proceedings - Opposition proceedings in being before European Patent Office - European law - Parallel proceedings - Whether in interests of justice to grant stay on proceedings before Irish Court - Patents Act, 1992 (1998/8761P - McCracken J - 14/3/01) - [2002] 3 IR 614 - [2001] 2 ILRM 363

Monsanto v Searle

The respondents sought a stay to proceedings being taken by the petitioners regarding the validity of an Irish patent. The respondents argued that a stay should be granted as proceedings were pending regarding the matter before the European Patents Office. McCracken J was satisfied that in assessing whether or not to stay patent proceedings in this jurisdiction in respect of which there are parallel proceedings in being before the European Patents Office there were a number of factors to be considered. Primarily as previous caselaw has demonstrated the courts must consider whether the imposition of a stay would be unjust. In addition it was undesirable to have proceedings concerning a patent being resolved in a national court whilst at the same time the corresponding European patent had still to be determined by the European Patent Office. Mr. Justice McCracken so held in acceding to the motion brought by the respondents in granting a stay on the present proceedings pending the final decision of the European Patent Office.

Citations:

PATENTS ACT 1992

BELOIT TECHNOLOGIES INC V VALMET PAPER MACHINERY INC 1997 RPC 489

KIMBERLY V PROCTER & GAMBLE 2000 SR 235

UNILEVER PLC V FRISA NV 2000 FSR 708

TREATY OF ROME ART 81

TREATY OF ROME ART 82

MASTER FOODS LTD V HB ICE CREAM LTD ECJ 14.12.2000

1 Mr.Justice McCracken delivered the 14th day of March 2001.

2 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.

3 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.

4 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.

5 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.

6 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.

7 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...