PRELIMINARY INJUNCTIONS
When assessing these circumstances (which refer to validity), the PI (preliminary injunction) court does not take a position in terms of validity, but only construes the data referring to validity in relation to the legitimate legal interest asserted by the patentee. By doing so, the approach of the courts is rather right holder-friendly. In principle, the courts attempt to assess infringements effectively, and there is only a limited number of patent cases in which the complexity of the technical issues hinders decision-making within the time available.
Beside this well-developed practice, there was a question of whether an invalidity action running parallel with the main action may have an impact on the maintenance of the preliminary injunction ordered in the meantime and, if yes, to what extent? According to the Patent Act the answer should obviously have been positive, but the court practice was ambiguous in this respect. Te year 2011 brought some new elements into the practice in terms of the assessment of data of invalidity proceedings as an argument for cancelling an ordered preliminary injunction; the court of appeal interpreted the effect of the not-yet- completed nullity proceedings on the preliminary injunction ordered earlier.
Te subject matter of the litigation was the infringement of a pharmaceutical patent. Te court (in the course of the preliminary injunction proceedings) had agreed with the claimant’s argument that the respondent’s product had fallen into the scope of protection and had disregarded the respondent’s nullity arguments. Parallel to the infringement proceedings, a nullity claim had been lodged against the patent in suit. Te patent office had not revoked the patent in suit but had ordered a significant amendment of the claims. Te applicant of the nullity matter had sought full revocation, so the decision had not entered into force. Te patentee had not sought further legal remedy against the patent office’s decision.
Te respondent was willing to take advantage of the limited scope of protection and requested the cancellation of the preliminary injunction. Te question to be decided by the PI court was whether the not-yet-binding decision of the patent office should be taken into account as a new element within the set of facts in terms of the preliminary injunction. Te other option was that the pending proceedings were not regarded as new facts affecting the already ordered preliminary injunction, thus the preliminary injunction (the freezing of sales) was maintainable further on.
Te first instance court’s reaction was negative at first: as the applicant of the nullity case had sought further legal remedy towards complete revocation,
the court considered the decision of the patent office in terms of validity pending; accordingly, the first instance court dismissed the respondent’s request for the liſting of the injunction. Te first instance court emphasised that until there was a final and binding outcome of the validity matter, the issue of infringement, or that of meeting of other criteria of the injunction (eg, the applicant’s rights with high appreciations), could not be effectively re-assessed.
Te second instance court, however, did not share this approach and pointed out that the preliminary injunction is “a quick and effective legal instrument of transitional nature with the goal of granting an appropriate and interim protection of rights”, provided that the criteria as laid down in the law are met. Te patent act specifies the requirement of assessing each and every circumstance of the matter and makes it possible to prove the contrary of the necessity of the injunction, so that the patent act does not require a final and binding decision in the validity matter before it can reassess the already ordered preliminary injunction.
Whether this decision will also have an impact on the judicial assessment of the criteria of preliminary injunction requests remains to be seen. We do not expect that validity issues will
60 World Intellectual Property Review Annual 2012
www.worldipreview.com
affect infringement proceedings in a broader sense in the future: the bifurcation system and its connecting practice will prevail. Nonetheless, this decision may draw attention to the need to assess effectively every circumstance, let alone the eventually available data of (any) invalidity proceedings, of the matter. n
Gábor Germus is the managing partner at Germus and Partners. He can be contacted at:
gabor.germus@
germus.eu
Csaba Dedinszky is a partner at Germus and Partners. He can be contacted at:
csaba.dedinszky@
germus.eu
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