PROVISIONAL RELIEF
The system governing preliminary injunctions for pharmaceutical patent infringement should be revised to stave off potential frivolous cases, say Hedwig Lindner and Manuel Morante.
In Mexico, patent and other intellectual property infringement
actions are litigated, in the
fi rst instance, before the Mexican Institute of Industrial Property (IMPI). Since 1994, IMPI has been authorised to grant various forms of provisional relief, including preliminary injunctions against the manufacture, sale and distribution of allegedly infringing goods.
Under Article 199 bis.1.I of the Industrial
Property Law, a plaintiff seeking provisional relief must “prove his ownership of the rights”, as well as “the existence of an infringement of his rights”; “the imminence of the infringement of his rights”; “the existence of the possibility of irreparable damage being sustained”; or “a justifi ed fear that evidence might be destroyed, concealed, lost or altered”. In other words, the plaintiff is typically required to show that it is likely to prevail on the merits before provisional relief can be granted. Alternately, the plaintiff can demonstrate the possibility of
irreparable
harm, or show that evidence is likely to be lost or destroyed—but this is usually not the case in patent infringement cases.
Despite the clear wording of the statute, IMPI frequently grants preliminary injunctions in patent infringement cases without considering the merits of
the case at all. Requests for
preliminary relief are routinely granted as long as the plaintiff shows that it owns a patent and that all maintenance fees have been paid. IMPI does not undertake a detailed analysis of the scope of rights conferred by the patent, and the plaintiff ’s allegations of infringement are generally taken at face value.
T is is a particularly serious problem in cases concerning pharmaceutical patents. T e inventions covered by such patents are oſt en marginal improvements on drugs that have entered the public domain, and questions of infringement cannot be fairly determined without a detailed analysis of product and the prior art.
the defendant’s
A plaintiff seeking a preliminary injunction must “provide suffi cient security to cover any damages that might be caused to the person against
www.worldipreview.com
“DESPITE THE CLEAR WORDING OF THE STATUTE, IMPI FREQUENTLY GRANTS PRELIMINARY INJUNCTIONS IN PATENT
INFRINGEMENT CASES WITHOUT CONSIDERING THE MERITS OF THE CASE AT ALL.”
whom the measure is sought …”. If the defendant eventually prevails on the merits, it can recover against the bond any damages caused by the wrongful granting of the preliminary injunction. Alternatively, it can have the preliminary injunction liſt ed while the case is still pending by posting a counter-bond. Historically, IMPI required the amount of the counter-bond to be double the amount of the bond posted by the plaintiff .
Unfortunately, this procedure has been frequently abused in pharmaceutical patent infringement cases. T e plaintiff s in such cases are usually large multinational companies, and the defendants are, typically, small or medium- sized generic drug manufacturers with fewer fi nancial resources. Oſt en, plaintiff s post extremely large bonds, wholly out of proportion to the value of the claim, to make it impossible for the defendant to raise the funds necessary to post a counter-bond.
In June, 2010, congress amended Article 199 bis.1.I to curtail this abuse. T e amount of the counter-bond is now limited to the amount of the original bond, plus 40 percent. However, the possibility of abuse remains as long as
Life Sciences Intellectual Property Review 2012 43
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