Janssen-Cilag Limited v The United States of America, as Represented by the Secretary, Department of Health and Human Services

In proceedings to revoke a UK patent, the court may authorise service outside the jurisdiction by an alternative method where there is good reason under CPR 6.15. An action seeking revocation of a UK patent is an action in rem. Accordingly, section 12 of the State Immunity Act 1978, which ordinarily governs service of process on a State, does not apply to such an action by virtue of section 12(7). CPR 6.44 cannot override the statutory scheme, but it does not prevent an order for alternative service where CPR 6.15 is satisfied.

The claimant sought revocation of the UK designation of a patent held by the defendant, the United States of America as represented by the Secretary of the US Department of Health and Human Services. It applied for permission to serve the claim form, particulars of claim and related documents out of the jurisdiction, and for alternative service under CPR 6.15. The defendant did not appear, although it had notice of the application.

The court considered whether the service provisions in section 12 of the State Immunity Act 1978 and CPR 6.44 applied, and whether the circumstances justified alternative service.

1. Order granted. The court granted the applications substantially in the terms sought, subject to the precise form of the order. The claimant was required to serve the defendant with the skeleton argument, transcript, supporting evidence and judgment. Confidential material could be served in redacted form, and the defendant could apply to vary or set aside the order under CPR 23.10.
2. State immunity provisions. Section 12(4) of the State Immunity Act 1978 was irrelevant because judgment in default was not sought. Section 12(7) provides that section 12 does not apply to an action in rem, and preserves the court’s rules concerning leave for service outside the jurisdiction.
3. An action seeking revocation of a UK patent is an action in rem. Relying on Virgin Atlantic Airways Limited v Zodiac Seats UK Limited [2013] UKSC 46, at paragraphs 7 and 32, the judge accepted that section 12 of the 1978 Act did not apply.
4. CPR 6.44 and alternative service. CPR 6.44 provides a procedural mechanism for service of documents on a State through the Foreign, Commonwealth and Development Office. It cannot override the 1978 Act. However, the court accepted that the power in CPR 6.15(1) permits service by a method or at a place not otherwise permitted by Part 6 where there is a good reason.
5. The reasons advanced by the claimant, as set out in its skeleton argument and developed orally, were sufficient to justify an order for alternative service.