Previous to the Court of Appeal decision in Glaxo v (1) Genentech (2) Biogen Idec Inc. in 2007 there was a presumption that that UK court proceedings would be halted until after a European Patent Office (“EPO”) opposition had been resolved.
After this case it will be increasingly unlikely that this will happen. Therefore starting revocation proceedings at the EPO with the intention of preventing and delaying the result of UK infringement proceedings is unlikely to work any more. This was in the past a clever tactic as including appeals, EPO revocation proceedings can last 3 to 6 years.
From now on halting UK court proceedings will usually be inappropriate because EPO opposition proceedings are too slow, and UK court proceedings are considerably faster as judgment can be given within a year. Any appeal made will take perhaps another year.
In the Glaxo case the Court of Appeal gave the opinion that commercial uncertainty was presented to the parties by such a situation. It thought both sets of proceedings should continue simultaneously. The uncertainty consideration was more important than the possibility of the UK court and EPO opposition proceedings resulting in different decisions.
Given that, in most cases, commercial certainty would be achieved at a considerably earlier date by UK court proceedings than by EPO opposition proceedings, this will almost always lead to a conclusion that UK court proceedings should not be halted to wait for an EPO ecision.
In the view of the Court of Appeal, much more weight must be given to a person who asserts he has a good reason for those proceedings not to be halted. The Court of Appeal also emphasised that it was legitimate for a party contesting the validity of a European patent to do so both in revocation proceedings in the English Courts and by opposition proceedings at the EPO.