Where there is basis for patent infringement proceedings disclosure is not anticompetitive

02/06/20

The High Court has considered for the first time whether providing sensitive information by way of disclosure in patent proceedings contravenes Article 101 TFEU and/or the Chapter I Prohibition in the Competition Act 1998.

The issue arose in proceedings between Teva UK Limited (“Teva”) and Chiesi Pharmaceuticals Limited (“Chiesi”), in which Teva sought to revoke three patents held by Chiesi for a pharmaceutical product used in the treatment of asthma. Chiesi counterclaimed for infringement, and Teva applied to strike out or stay Chiesi’s counterclaim on the grounds inter alia that the infringement claim was strikeable as a matter of patent law, and in any event, the provision of the confidential information sought by Chiesi by way of disclosure was not necessary to enforce Chiesi’s patent rights at this stage and would therefore contravene competition law.

Mr Justice Birss agreed that Teva and Chiesi could be regarded as potential competitors. He further accepted that the provision of information between undertakings can amount to collusion for the purposes of Article 101 TFEU. However, he did not consider that the provision of necessary disclosure in patent litigation gave rise to collusion.

Mr Justice Birss also considered the application of the ancillary restraint doctrine. It was common ground that the conduct of patent litigation was pro-competitive and a legitimate aim, but it was disputed whether the test of objective necessity was satisfied in circumstances in which the issue of infringement need only be decided after resolution of the issue of validity. The Judge considered, in this case, that infringement and validity should be resolved at the same time, and that disclosure was objectively necessary to that exercise.

The judgment is here.