Ivax Pharmaceuticals (UK) Ltd v Astrazeneca AB

Where patent revocation proceedings in a national court substantially overlap with opposition proceedings before the EPO, a stay is presumptively appropriate. The court must balance that desirability against injustice, the public interest and the parties’ evidence. The likely length of the EPO process does not, by itself, justify refusing a stay. A party relying on an urgent commercial opportunity must show that its position genuinely requires an immediate national decision. Delay in commencing proceedings and inconsistent pursuit of related opportunities may undermine that case. A stay may be removed if circumstances materially change, including failure to prosecute the EPO proceedings with due diligence.

Ivax brought proceedings seeking revocation of AstraZeneca’s patents for an inhaled drug combination used to treat asthma and chronic obstructive pulmonary disease. Parallel opposition proceedings concerning both patents were pending before the EPO. AstraZeneca applied for a stay of the English proceedings pending final resolution of those proceedings. Ivax relied on commercial urgency and the public interest in earlier availability of competing products. The court also considered, contingently, whether the trial should proceed in December 2004 or be delayed until April 2005.

1. Stay granted. The court stayed the patent revocation proceedings pending determination of the parallel EPO proceedings.
2. Earlier authority established a presumption or emphasis in favour of a stay where national proceedings and EPO proceedings overlap. The justification is to avoid duplicated proceedings and potentially conflicting decisions. The presumption is subject to injustice and the public interest.
3. The predicted EPO timetable was uncertain, with final resolution sensibly estimated for 2008 or 2009. That delay was undesirable, but delay alone did not outweigh the presumption in favour of a stay.
4. Ivax had not shown that its commercial position required an immediate English decision. Its delay in opposing the patents and commencing proceedings, together with its failure to pursue available parallel strategies consistently, weakened the asserted urgency. Its public-interest case depended on the same evidence and therefore failed for the same reason.
5. The court distinguished Unisantis SA v X-Ray Optical Systems Inc, [2004] EWHC 734 (Ch), where a royalty limitation had been a crucial feature. That issue did not determine the present application.
6. The court expressed the view that, if a trial date had been necessary, April 2005 would have been preferable to December 2004. Ivax remained at liberty to apply to remove the stay if circumstances changed, especially if the EPO proceedings were not prosecuted with due diligence.