Philip Morris Products, SA & Anor. v Nicoventures Trading Limited & Anor.

Applications for Arrow-type declaratory relief should proceed to trial where the pleaded facts and arguments disclose a realistic claim with at least arguable utility. The jurisdictional threshold is low, and case-management prejudice can ordinarily be addressed through suitable directions.

On an application to stay national patent proceedings pending EPO opposition proceedings, the court must balance justice in all the circumstances. A stay is the default where no other factor applies, but it may be refused where the national proceedings can provide commercial certainty considerably earlier, assist related litigation, or promote settlement. The court should assess the parties’ assertions critically without conducting a mini-trial of commercial intentions.

Philip Morris sought permission to amend its revocation action concerning BAT patents to add Arrow-type declaratory relief. BAT opposed the amendment principally on case-management grounds.

In a separate action, BAT sought revocation of Philip Morris’s patent EP323. Philip Morris applied for a stay pending final resolution of parallel EPO opposition proceedings. BAT resisted the stay and sought an early trial, relying on the need for commercial certainty in the UK, the possible exportable value of an English validity judgment, and the recently granted divisional patent EP225.

The court determined whether the amendment should be permitted and where the balance of justice lay on the stay application.

1. Arrow-type relief. The court applied the principles reviewed in Glaxo Group Ltd v Vectura Ltd [2019] RPC 2 and Mexichem UK Ltd v Honeywell International Inc. [2020] RPC 11. The jurisdictional threshold was low. The proposed declaration had arguable utility in clearing the way for a prospective UK product launch. The pleaded facts and arguments therefore disclosed a realistic claim suitable for trial.
2. The amendment was not very late. Although the existing timetable required adjustment and introduced new prior art, the application was made promptly after BAT consented to revocation of one patent. The parties were well resourced and could prepare properly for trial. Permission to amend was granted, with directions agreed and made.
3. Stay application. The court applied the guidance in HTC v IPCom [2014] RPC 12. The discretion was very wide and required the balance of justice to be assessed in the circumstances of the particular case. A stay was the default where no other factor applied, but the court could refuse it where the UK proceedings would provide some commercial certainty considerably earlier than the EPO proceedings.
4. The EPO opposition and any appeal were likely to take materially longer than a UK trial and judgment. An Opposition Division decision would not necessarily provide the same certainty as a detailed national validity decision. The recently granted divisional EP225 reinforced the need for an early determination because further EPO proceedings could prolong uncertainty.
5. The court treated the UK judgment’s possible value in related European proceedings as a relevant, though not independently decisive, factor. It gave limited weight to settlement because the parties’ worldwide patent dispute had continued despite earlier reasoned judgments. The court rejected an invitation to conduct a mini-trial into BAT’s commercial plans. A clearing-the-way action did not require an immediate intention to launch.
6. The stay was refused. The 002 Action was directed to trial in March 2023. Costs followed the event, and the costs of each application were summarily assessed at £75,000, producing no payment between the parties.