Update 14 July 2017 the judgment was overturned by the Supreme Court  UKSC 48, albeit not on the issues discussed here.
Actavis UK Ltd & Ors v Eli Lilly & Company  EWCA Civ 555 discusses ia, at 100 ff, the question whether under Rome II the English court must apply the corresponding foreign laws governing the conditions for applying for patent ‘declarations of non-infringement’ (DNIs) in each of the foreign jurisdictions, or whether English law, as the lex fori, applies. English law takes a more relaxed attitude amongst the EU Member States re what must be shown before a party can apply to the court for a DNI.
Are the rules for obtaining DNIs matters of procedure, falling outside the scope of Rome II per Article 1(3)? The judge whose findings were being appealed had held that DNI standing rules are not concerned with the substantive rights and obligations of the parties with regard to infringement of the patent in suit: they fall under the procedural exception. Viz the argument that Article 15(c) (A15 deals with the ‘scope of the law applicable’) he had held that there is a distinction to be drawn between the availability in principle of a remedy and the steps which must be taken in order to obtain that remedy. It was in his judgment only the former which was caught by Article 15 and made subject to the lex causae.
Longmore LJ at 138 referred to Wall v Mutelle de Poitiers Assurances and agreed with the first instance judge that the rules with which the case is concerned are conditions of admissibility of actions, rather than rules concerned with the substance or content of parties’ rights. They are covered by the exception for procedure and hence subject to the lex fori, English law. At 144 ff he rejects the applicability of specific parts of Article 15 to the various conditions relating to DNIs.
Interesting and relevant.
(Handbook of) EU Private International Law, 2nd ed. 2016, Chapter 4.
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