English Court of Appeal clarifies the level of detail needed in an Arrow declaration

A new Court of Appeal decision concerning Arrow declarations, Mexichem UK Ltd v Honeywell International Inc [2020] EWCA Civ 473, the first instance decision of HHJ Hacon to refuse to strike out or grant summary judgment on an application for two Arrow declarations has been upheld. The declarations sought related to the use of certain refrigerants in the manufacture of products for mobile air-conditioning units; the claimant wanted to market these in the face of the defendant's pending applications in the EPO. 

The strike out was sought because the claimed declarations did not describe the product in actual production and neither were they based on a fully formulated product description.

The Court of Appeal states that it has a broad and flexible discretion to grant declaratory relief where it would serve a useful purpose, subject to sufficient clarity that it can be properly justiciable. That clarity requires the declaration to refer to specific features and combinations of features, but there is no threshold requirement that the party seeking an Arrow declaration has to have a fully formulated product description, and much less a product in actual production. The utility of the extent of generality or particularity of the declaration is a matter of degree to be assessed at trial. It is not correct to construe declarations as if they are patent claims, so that every conceivable product falling within the declaration is being declared to be obvious. 

The Court also comments that although the step-by-step analysis of obviousness had been held to be unfair in many cases (because of the risk of hindsight that it introduces), there is a class of case in which it can be relevant to consider each step in a putative series of steps taken by the skilled person and consider whether any of them individually, and cumulatively, was obvious (for which reference is made to the eight factor in the Supreme Court's Actavis v ICOS judgment).

Forum: English Court of Appeal
Date: 1 April 2020