Are interim injunctions available in patent litigation proceedings?
Interlocutory injunctions are available in Australian patent infringement cases.
They are most common in the area of pharmaceutical patents where “irreparable” harm is easier to demonstrate. Outside of this field, interlocutory injunctions are not common in patent cases. Interlocutory injunction applications are usually dealt with inter partes, unless there is a case of special urgency (an ex parte injunction is usually referred to in Australian practice as an interim injunction). An inter partes interlocutory injunction application will generally be heard within 6-8 weeks. Ex parte interim injunctions can be granted on application, but will usually only be in place for a short period of time before the injuncted party can contest the injunction.
The requirements for an interlocutory injunction to be granted are that:
- there is a serious question to be tried;
- damages will not be an inadequate remedy; and
- the balance of convenience and justice favour grant of the injunction.
Delay is an important factor for an interlocutory injunction. It is important that the applicant act as quickly as possible after learning of the infringing activity, as failure to do so will be relevant to consideration of the balance of convenience.
An applicant for an interlocutory injunction must provide an undertaking as to damages, which requires it to compensate the party against which the injunction is sought if the applicant is ultimately unsuccessful at final trial.
Preliminary injunctions / interim injunctions are possible a PI application is usually the start of infringement proceedings. A PI request may be filed at any time, with the main action or before and – since urgency is not a requirement apart from ex parte requests – after initiation of main proceedings.
PI proceedings are held inter partes in most cases. Ex parte proceedings are possible if the enforcement of the claim would otherwise be prevented, (very rare in patent cases).
In inter partes proceedings, the court will serve the opponent the PI application within a few days after filling and grant a right to respond within a deadline of usually between 7 and 21 days. It is customary that at the request of the applicant the parties may file a second brief each; however, there is no statutory right for such ‘second round’. If such ‘second round’ of briefs is allowed, this prolongs proceedings for at least another 6 weeks.
PI proceedings are usually solely held in writing. However, oral hearings are possible in theory and are at the discretion of the court.
In PI proceedings (as in main proceedings) the applicant has to show ownership of the patent or a right to sue based on a license agreement, validity and infringement. In PI proceedings only prima facie evidence is required. This means that the parties only have to show the predominant probability of their respective positions and that only readily available evidence may be submitted. The exact meaning of ‘predominant probability’ is not entirely clear, but in practice it means a standard of proof which is only somewhat below the standard of proof in main proceedings.
The applicant therefore is advised to provide a substantiated argument with regard to validity and infringement (e.g. through private experts) already in its initial brief if he expects being challenged by the opponent on these points.
If the court doubts the validity of the patent it may not suspend PI proceedings but must rule on the question of validity itself. If the applicant failed to provide prima facie evidence for validity the court, therefore, has to deny the PI application.
Because of the principle that only readily available evidence is admissible, the court will generally not appoint an expert in PI proceedings. Private experts, therefore, have special relevance.
The only claims that may be asserted in PI proceedings are injunctive relief and possibly removal of the infringing goods from the channels of commerce. However, the extent of the latter is contentious and previous case law of the Austrian Supreme Court speaks against the possibility to ask for removal of products in the channels of commerce that are no longer in the sphere of control of the applicant.
There is no balance of interest requirement in Austria. Once infringement and validity are established the court will grant an injunction. Courts may, however, grant the PI under the condition that the applicant places a security for potential damages of the opponent due to an unjustified PI. If a security is ordered the PI will only become enforceable once the opponent places the security with the court. This is often done in the form of a bank guarantee.
In setting the amount of the security, the courts will at their own discretion estimate the potential damage without making any special inquiries or stating the reasons for their decision. However, the parties may provide prima facie evidence with regard to the amount of potential damages.
In theory, the law also provides for the possibility that the court sets a security for the opponent. In this case, the PI would be lifted once the opponent pays the security. However, according to case law, this provision is not applicable in patent infringement cases (Austrian Supreme Court 16.02.2011, 17 Ob 5/11a).
As stated under Question 2., first instance inter partes PI proceedings take around 3 to 9 months. In the rare case of ex parte proceedings, a PI can be obtained within a few weeks.
A PI becomes immediately enforceable once it was served to the opponent (and if applicable the security was paid). An appeal against the PI in general does not have a suspensive effect (see Question 3.).
Yes, they are widely available and almost always requested by the plaintiffs, both in infringement lawsuits and in invalidity lawsuits. But the probability of getting a preliminary injunction granted is higher in an infringement lawsuit, although not very common.
The requirements for the granting of an interim injunction are (i) strong evidence that convinces the judge of the likelihood of the plaintiff’s claims, and (ii) the risk of irreparable harm to the party’s right.
It is up to the judge’s discretion to decide on whether a bond is necessary in the case. Normally, when the party awarded with an interim injunction is a company with assets in Brazil, the Judge does not require the posting of a bond.
Interim and interlocutory injunctions are available, but historically have been rarely granted in patent litigation proceedings. A moving party must satisfy a three-part test:
- There is a serious question to be tried;
- The claimant will suffer irreparable harm if the injunction is refused; and
- The balance of convenience favours the granting of an injunction.
Such injunctions are typically difficult to obtain in patent infringement proceedings, where claimants face difficulty in proving that the harm is irreparable because in most cases the courts have found that damages would be adequate compensation. However, the Federal Court has in recent times indicated that it is open to considering injunctions in appropriate circumstances, and has recently granted an interlocutory injunction in a patent case.
Yes, interim injunctions are available in patent litigation proceedings. Under the law, the court shall consider the following factors when reviewing an application for an interim injunction:
- whether the applicant’s request has factual and legal basis, including whether the validity of the intellectual property to be protected is stable;
- whether the failure to enforce injunction will cause the legitimate rights and interests of the applicant to suffer irreparable injury or will cause difficulty in enforcement of the ruling;
- whether the injury suffered by the applicant as a result of the failure to enforce injunction will exceed the injury suffered by the respondent as a result of enforcement of injunction;
- whether the enforcement of injunction will compromise public interest; and
- any other factors to be considered.
The court shall, prior to granting an injunction, question the applicant and the respondent, except when the situation is urgent or the inquiry may affect enforcement of the injunction. Therefore, basically, preliminary injunctions are available on an inter parte basis. In addition, the court would require a cross-undertaking in respect of damages before granting an interim injunction.
Interim and preliminary injunctions ‘PI’ are available in patent disputes. The court has to rule on the application within 7 days and no hearing can be held. In practice the absolute majority of cases are thus decided ex parte. However, the defendant attempt to submit a written defence and evidence.
The PI application must be accompanies by a 50,000CZK statutory bond. The court can increase the bond of its own motion before deciding (which is rare) or after grant on application of the defendant. There is no upper limit.
The PI bond in no way limits the liability for damage which the law applies on the PI applicant in relation to all persons to whom damage is caused by the PI. The unlimited liability, which can only be avoided if the damage would have occurred regardless of the PI, can only be avoided if the PI applicant succeeds on the action on merits or if its rights are satisfied.
If the PI is rejected or refused the defendant is not informed.
An ordered PI is enforceable upon service on the defendant.
The court will order the PI if the existence of the patent right and its infringement are established and there is a need to adjust the position of the parties or there is a threat that the enforcement of a future decision would be jeopardised. In practice the courts look to the patent’s formal registration only and do not form their opinion about the patents validity. It can be sufficient to merely argue infringement, but in technically complex matters an expert report finding that a product or process falls within the scope of protection of the patent is recommended. The need for the interim injunction can be established where the presence of the product on the market is causing ever-increasing damage, or where the threat of infringement is such as to threaten to cause irreparable harm.
PIs are readily available in patent cases, with the courts being patent-friendly, however, the courts are less prepared to grant injunctions where the right is close to expiry or the product is not present on the market (and there isn’t conclusive evidence of an imminent launch).
The decision can be appealed as-of-right, however, the order remains enforceable pending the appeal decision. The appellate court must base itself on the evidence presented at first instance, i.e. no new evidence can be presented by the defendant, who must restrain itself to arguing that the PI should not have been ordered based on the evidence available.
Any person entitled to initiate an infringement action, i.e. the patentee or the exclusive licensee, may request preliminary or provisional / permanent injunctions against the alleged infringer, its intermediaries or suppliers, to prevent an imminent infringement or to make it cease. Preliminary injunctions can be obtained ex parte or inter partes depending on the urgency of the case. Indeed, for an ex parte proceedings the applicant must show that any delay would cause him / her irreparable harm.
Provisional injunctions can be subject to the payment of a bond or the Court may authorize the continuance of the infringement pending the outcome of an appeal subject to a bond.
For preliminary injunctions, the claimant is required to demonstrate that infringement is likely or imminent and that the patent at issue is prima facie valid. In that respect, only prima facie and obvious invalidity of the patent makes the infringement not plausible as patents enjoy a presumption of validity. In preliminary injunction cases, extensive debates on validity occur at that level. Obviously, the judge in charge of the preliminary injunction application has no jurisdiction over patent validity but the judge will make a pre-assessment of the risk of revocation of the patent at issue. It is impossible to obtain a preliminary injunction when infringement by equivalence is argued.
Unless the injunction is granted in the course of pending proceedings, the applicant must initiate proceedings on the merits within 20 business days or 31 calendar days whichever is the longer, otherwise the preliminary injunction is void and the defendant may be entitled to be compensated for the damage arising out of the injunction.
Interim injunctions are available in patent infringement matters under German law. The requirements for obtaining an interim injunction, however, are usually relatively strict and depend on the individual court.
In interim injunction proceedings, the claimant must present a rather clear-cut case on infringement. Complicated cases are usually unsuitable for preliminary injunction proceedings.
Further, the claimant must show that the patent is valid beyond any reasonable doubt. Some courts require that the patent previously successfully survived invalidity challenges (Düsseldorf or Mannheim). Other courts are more open for arguments regarding the patent’s validity but still the threshold is high (Hamburg or Munich).
In addition, claimant must convince the court that the matter is urgent and that it has acted swiftly without unreasonable delay as soon as claimant became aware of the alleged infringement.
With respect to urgency most courts require the request for an interim injunction to be filed within 1-2 month after first knowledge of infringement.
Interim injunctions can be granted either ex-parte or inter-partes including an oral hearing. Ex parte injunctions are the exception these days. This exceptional status might even increase after recent decisions of the German Constitutional Court which decided that interim injunctions usually cannot be granted without hearing the defendant.
The grant of an interim injunction on an ex-parte basis usually takes about 2-3 days after the request was filed. On an inter-partes basis, interim injunctions usually are decided upon within 6-8 weeks.
Usually, courts order that preliminary injunctions shall only be enforceable after the placing of a security bond which is intended to cover potential damages of the alleged infringer in case the injunction will be lifted at a later stage.
23. Two preliminary proceedings are available: temporary restraining orders and injunctions. The first and quickest defence against infringement is filing for a temporary restraining order. For the court to grant a restraining order, the petitioner must prove the existence of a prima facie serious infringement and that the matter is of exceptional urgency. The request must be filed concurrently with a petition for injunction. If a temporary restraining order is granted, it remains effective until the injunction hearing takes place. For an injunction to be granted, the element of urgency must be evident. Within this framework, patent owners can request cessation of the infringement and removal of the allegedly infringing products from the market. Patent owners also have a right to information and are entitled to certain measures to preserve evidence.
The Greek Civil Procedure provides for an ex parte Temporary Restraining Order. However, this practically does not apply in patent infringement cases. In practice, the Defendant must be informed 24-48 hours prior to the hearing of the Temporary Restraining Order.
Yes. Interim injunctions as a remedy is available in a patent litigation proceedings.
The Plaintiff has to prove the elements of prima facie case, balance of convenience and irreparable harm and injury. In some cases where where the Plaintiff has succeeded in establishing a prima facie case and the Defendant’s product was not yet launched commercially, the Courts have held that it was appropriate that status quo be maintained which means that till final decision on the injunction application, the Defendant may not launch their product at the interim stage.
There are various factors which may be taken into account while deciding whether an interim injunction should be granted, as below, among others:
a) Whether Defendant has commercially launched the product;
b) Whether there is a credible challenge regarding the validity of the patent being enforced;
c) The likelihood of damage being caused to the Plaintiff if the injunction is not allowed;
d) Whether the conduct of the Defendant has been malafide;
e) Public interest;
f) Whether there was an attempt to take a license from the Patentee and the license was available on fair and reasonable terms;
g) Length of time between the expiry of the Patent and the time taken for grant of marketing authorization to the Defendant also should be factored in deciding the interim applications.
Yes, preliminary injunctions are available from the Irish courts in patent litigation proceedings and are granted if the party seeking the injunction establishes:
(a) There is a serious issue to be tried;
(b) The “balance of convenience” favours an injunction.
Preliminary injunction applications are almost always heard inter partes. Where interim ex-parte relief is sought, the judge would normally make an order for short service of the papers on the other side and put the matter back for mention for a few days up to one week later. At that time a defendant is generally allowed time to file a replying affidavit. A plaintiff may wish to file a further affidavit on receipt of the replying affidavit.
In Ireland, the granting of preliminary and permanent injunctions is subject to equitable principles and therefore the Court always has discretion whether to order an injunction. In recent years, preliminary injunctions in patent cases had become difficult to obtain in Irish proceedings. Where damages were held to be an adequate remedy for the applicant (in the event that he succeeded at the trial of action), preliminary injunctions were typically refused and no consideration of the balance of convenience was undertaken by the Court.
However, in the recent decision of the Supreme Court in Merck v Clonmel Healthcare Ltd the Court delivered an extremely important and far reaching decision concerning the approrpate test for the grant of a preliminary injunction which reasserts the flexible nature of the remedy and clarifies that adequacy of damages (or irreperable harm) should be assessed as forming part of the wider balance of convenience. Irish courts must now consider the whole balance of justice and not just irreparable harm when deciding whether to grant relief.
This ruling reaffirms the flexible nature of preliminary injunctions as a remedy and moves away from the treatment of the Campus Oil and American Cyanamid principles as akin to statutory rules. The decision clarifies that the adequacy of damages, although often the most important factor, is part of the overall balance of convenience and is not an antecedent, stand-alone test which must satisfied prior to a consideration of the balance of convenience.
The Supreme Court outlined eight steps which might be followed in applications for preliminary injunctions:
1. The Court should consider whether, if the plaintiff succeeded at the trial, a permanent injunction might be granted.
2. Is there a fair question to be tried. This may also involve a consideration of whether the case will probably go to trial.
3. The Court should consider how best the matter should be arranged pending the trial, which involves a consideration of the balance of convenience and the balance of justice
4. The most important element in that balance is, in most cases, the question of adequacy of damages.
5. In commercial cases where breach of contract is claimed, courts should be robustly sceptical of a claim that damages are not an adequate remedy
6. Difficulty in assessing damages may be a factor which can be taken account of and lead to the grant of an interlocutory injunction
7. A number of other factors may come into play and may properly be considered and weighed in the balance in considering how matters are to be held most fairly pending a trial, and recognising the possibility that there may be no trial
8. Any application should be approached with a recognition of the essential flexibility of the remedy and the fundamental objective in seeking to minimise injustice.
When the patent is valid and infringed, the court will grant an injunction restraining further infringement of the patent. In addition, orders requiring the recall of patent infringing goods, destruction of the goods, etc. are available.
In addition, the owner of a valid and infringed patent is entitled to damages, as further detailed below. In order to facilitate an adequate award of damages, the plaintiff will be entitled to an order requiring the infringer to submit detailed accounts of the extent of the infringement and of the profits derived therefrom.
Yes. Preliminary injunctions (PIs) are normally granted inter partes. Ex parte PIs are possible but as far as patent matters are concerned, they are granted only in cases of exceptional urgency.
PIs are granted subject to (i) a prima facie case of validity and infringement and (ii) the risk of an irreparable harm for the patentee in the absence of an injunction.
Since our judges do not have a technical background, assessing prima facie validity and infringement will normally require the appointment of a Court Appointed Expert to provide a non-binding opinion untangling the technicalities of the case and providing the CAEs’ view on the case, see point 12 above. As opposed to ordinary proceedings, the CAE’s assessment in PI proceedings is necessarily condensed in time given the urgent nature of the proceedings.
As regards irreparable harm, the patentee must prove that without a PI it will suffer an irreparable harm, namely a harm that would be impossible to restore by means of mere economic compensation at the end of full blown merits proceedings. Generally speaking, irreparable harm arguments revolve around the market share erosion that the patentee will suffer should the infringer be allowed to carry on with the infringing conduct throughout the normal course of ordinary proceedings.
There is no fixed rule or statute of limitation period for the filing of a PI motion, but patentees need to react promptly. A delay in seeking relief of a few months already might impair the urgency of the case and, thus, the chances of getting a PI.
A further criterion that courts may take into account in deciding whether to grant or dismiss a PI is balance of convenience i.e. which party is most likely to suffer the most serious consequences, the patentee (in case the PI is dismissed and the patent is subsequently found valid and infringed in merits proceedings) or the alleged infringer (if the PI is granted and the patent is subsequently revoked/found not to be infringed). This requirement is not provided for in statutory provisions. However, it can be taken into account as part of the judge’s discretion/equitable assessment.
The typical timeline for the grant of a PI would be 3-4 days (when granted ex parte) and 4-6 months (when granted inter partes).
Our system does not contemplate cross-undertakings. The judge might order the petitioner to post a bond to cover for potential liabilities in case the PI is lifted, but this provision is basically never applied in practice. The reason for this is that, unlike in other European jurisdictions, there is no automatic liability for the petitioner in case the PI is granted and subsequently lifted following a finding of invalidity/non-infringement. Liability for the petitioner is found only if it can be demonstrated that the latter has taken legal action out of due diligence. As far as we are aware, findings of liabilities were reached only in exceptional cases of negligence and bad faith.
Yes. Proceedings are conducted inter partes and may address an issue regarding patent validity, and thus, the time period taken to issue an interim injunction order is generally not so different from the time period taken for the proceedings of the lawsuit on the merit (at a practical level, there have been many precedents in which an interim injunction case and the lawsuit case on the merit are pending before the same court and the proceedings for the two cases progress concurrently, and it may take one year or more to reach the issuance of an interim injunction order). In order to have such order issued, it is necessary to verify: (i) the existence of a right to demand an injunction based on the patent rights (infringement); and (ii) the necessity for provisional remedies. In practice, point (ii), i.e., the necessity for provisional remedies, is often verified in a relatively relaxed manner, for example, when prima facie evidence is sufficiently provided with respect to an infringement relating to point (i), or when a patented-invention product by the patentee and the relevant infringing product are competing in the market. As opposed to a permanent injunction, when an interim injunction order is issued, the patentee is generally required to provide security (in the amount equivalent to the profits which could have been gained by the debtor but for the interim injunction). Upon receiving an interim injunction order, the patentee is then in a position where it can readily file an application for the execution of such order. As opposed to a permanent injunction, a stay of such execution usually will not be permitted even if the alleged infringer files an appeal.
Interim (preliminary) injunctions are available in patent litigation proceedings.
It is possible to request that a preliminary injunction is granted without the defendant being heard. However, this is seldom granted in patent cases.
Preliminary injunction proceedings in patent cases will as a general rule be conducted as inter partes proceedings – either as separate proceedings or as a part of ordinary proceedings on the merits.
In order to obtain an injunction, the petitioner must substantiate his claim and the urgency of the matter. In patent cases, the fact that there is a continuous infringement of the patent normally makes the matter sufficiently urgent.
In patent cases, the main remedy is normally a prohibition against further use or sales of the infringing goods.
The court may make the injunction conditioned on financial security from the petitioner. This is quite normal.
If an injunction is reversed through appeal or in subsequent ordinary proceedings, the petitioner has a strict liability for damages caused to the other party as a consequence of the injunction.
A preliminary injunction (PI) may be requested prior to or during main proceedings.
In order for the preliminary injunction to be granted, an applicant must corroborate (i) the infringement and (ii) legitimate interest in obtaining the PI.
The corroboration of infringement is understood twofold: firstly, this is understood as providing such evidence that is sufficient to establish that the claims are probable. Secondly, corroboration means that not all formal requirements have to be fulfilled for the evidence to be accepted in the PI proceedings. For instance, during the main action issues requiring special knowledge have to be proved by a court-appointed expert opinion, while in the PI proceedings it is generally sufficient to present a private opinion.
As to the legitimate interest, it exists when lack of the PI may render impossible or seriously hinder enforcement of a final decision in a case or otherwise render impossible or seriously hinder achieving the aim of the proceedings.
Preliminary injunction is typically granted in camera and ex parte – on the basis of the PI request only. The defendant usually does not participate in these proceedings until the PI is served on him – either by the court or the court enforcement officer (if a seizure of the products is ordered). Neither is the defendant notified about the filing of the PI request – however, if he/she learns about such request from any source he/she may file a brief containing his/her arguments and it should be taken into account by the court.
The court may decide on the PI request in an open hearing although it happens very rarely, in most cases only if a prima facie convincing protective brief has been filed by the defendant.
PI cases are decided relatively quickly, in theory a patent case should be decided in 7 days from filing of the PI request. In practice, depending on the court, it takes from several days to several weeks at most.
One of the means of balancing the positions of the parties of PI proceedings is a security bond, the amount of which should correspond to the value of potential damage which may be suffered by the defendant due to the enforcement of the PI. Should the court demand such a security bond, the enforcement of the PI is conditional upon the payment of the deposit by the applicant to the court’s bank account. No cross-undertaking concerning damages is required because the applicant for a PI is ex lege liable for any damages caused to the defendant in result of the PI enforcement. The case for damages has to be brought within one year after the infringement case was dismissed in a final and legally binding decision. It requires institution of a separate civil case.
PIs can be decreed on the basis of threat of infringement or actual infringement. For the last type, it suffices to prove the right ownership right and its infringement; however, if there is only a threat of infringement, it must be also established the irreparable harm (which may be difficult to prove).
The chances of success in PI proceedings depend largely on the amount of evidence produced by the parties.
Ex parte PI are available but from our experience they are very unlikely to be granted.
If invalidity is raised, the courts will consider it and will put a weight on foreign decisions about the same right; the same tends to happen with infringement. The level of evidence that is required (notably the hearing) is similar if not the same as main hearings.
In the IP Court, a decision should take 6-8 months to be taken; in the arbitral tribunals, they may take 3-6 months.
The provision of a bond is not required for a PI to be granted but can be fixed by the courts (although it is not that common).
According to a recent decision of the LCA, the liability for ungrounded PI should be considered a strict liability (i.e. the fault of the PI applicant must be established).
Interim or Preliminary injunction (PI) is provided as a possible measure to assure the rights of a plaintiff due to part 2 article 1252 of the RUCC, but current case law is rather negative on PI in patent infringement cases.
Due to article 90 of the Arbitration Procedural Code and clarifications of the Plenum of the former Supreme Arbitration Court as of October 12, 2006 No 55, difficulties in enforcement of future final decision may be caused by the lack of assets by a defendant or if defendant takes actions to lessen the amount of assets. These actions and threat should be proven by the plaintiff is he seeks for PI.
To prevent causing irreparable harm to the plaintiff, the Plenum says, PI should be targeted to keep status quo between the parties.
Therefore the Plenum rules that the courts when taking PIs should consider:
- reasonability of the plaintiff’s requirement for PI;
- probability of causing irreparable harm to the plaintiff in case PI are not taken;
- ensuring balance of interests of the parties;
- preventing infringement of public interests and interests of the third parties by taking PI.
Besides, the court should estimate whether this very PI is proportional to the claims and how this very PI is going to ensure the claims.
Refuse in preliminary injunctions is appealable to the appeal court.
The court cannot refuse in the request for preliminary injunction in case the plaintiff provides counter secure. Though, this counter secure would be placed in addition to one of the two requirements above, not instead of them.
While there have not been many reported cases in Singapore in relation to interim injunctions in patent litigation proceedings, interim injunctions may be applied for patent infringement cases as it may be applied for in other civil cases.
An application for an interim injunction in patent litigation follows similar principles as those in other cases. The applicant must show that there is a serious question to be tried, that damages are not an adequate remedy and that the balance of convenience lies in favour of granting an injunction. The procedure for obtaining an interim injunction is set out in Order 29 of the Rules of Court. In exchange for obtaining an interim injunction, the plaintiff may be required to undertake to the court to compensate the defendant in the event that his claim fails and the interim injunction has caused the defendant loss.
In specific relation to therapeutic products to be registered in Singapore, a 30-month moratorium on registering the said products is available to patent proprietors who are put on notice (as required by the relevant legislation) that an applicant is seeking to register a therapeutic product which is related to a patent that is currently in force. This moratorium is automatic and will kick in on the date that the application for the moratorium is made.
An application for an interim injunction must be made by summons together with a supporting affidavit. Where the case is urgent, the application may be made ex parte.
Even if the interim injunction is not granted, a party may apply for an expedited trial of the action.
A preliminary injunction (“PI”) action is an instrument for obtaining an interim (preliminary) injunction. The requirements for a successful PI action are: (i) the right to claim injunction (current or imminent infringement of the patent); and (ii) need for preservation (irreparable harm to the patentee).
The first instance-trial for a PI is heard by a district court. A preliminary injunction proceeding normally takes three to eight months, but may be delayed when an invalidation proceeding is co-pending at the IPTAB. A PI action proceeds separately from the main action and is reviewed by a separate department of a district court that focuses on PI actions. A plaintiff in a PI action must make a prima facie showing of patent infringement based on the proffered evidence. Generally, only documentary evidence is allowed, and no witness examinations or expert appraisals are conducted. PI actions based on patent infringement are reviewed inter parte, and in most cases, two to three hearings will be scheduled at two to three weeks intervals.
If a PI order is issued, the plaintiff is required to post a bond in the amount determined by the court. In determining the bond amount, the courts consider several factors such as infringer’s revenues and profits. A PI order can be executed immediately upon posting of the required bond, even if the defendant files an appeal.
Interim injunctions are available as part of a merits proceedings and are granted upon a finding of probable cause for the infringement action, if it is reasonably held that continued infringement will be prejudicial to the patent rights. There is also a proportionality requirement, barring the courts from granting interim injunctions where this would be disproportionate.
The claimant must also provide sufficient security to protect the defendant from any damage it may suffer from the interim injunction if the decision on the merits overturns the finding of infringement, for which the plaintiff will be liable if it loses on the merits (liability is strict and is not limited to the amount of the security if it proves insufficient).
Interim injunctions may be granted ex parte if it is assumed that communication with the defendant would be prejudicial to the plaintiff.
However, ex parte injunctions are very unusual in Sweden, normally limited to obvious infringement or where a short delay would cause irreparable harm.
An interim injunction will normally be granted between one and six months after having been requested.
Interim injunctions are available in civil proceedings. The applicant must provide prima facie evidence that: (i) there is an actual or imminent infringement (ii) this infringement threatens to cause irreparable harm; and (iii) the requested measure is proportional (controversial). Interim injunctions may be granted ex parte in cases of special urgency, notably if there is a risk that the interim injunction’s enforcement will be frustrated if the opposing party is heard first.
According to case-law, a claim for interim injunctions is forfeited if the applicant, after having learned about the infringement, waits for more than 14 months to request interim injunctive relief. A claim for ex parte interim injunctions may already be forfeited if the applicant fails to file a request within one month.
Interim injunction proceedings may take up to 8-10 months. If the requirements forex parte injunctive relief are met, the court will grant the injunction ex parte without delay.
Interim injunctions, known as “preliminary injunction” in Taiwan, are available in patent litigation proceedings. Courts will grant a preliminary injunction only in an extremely exceptional situation where the party moving for a preliminary injunction has established that the party will suffer irreparable harm due to the injuring acts and a preliminary injunction is indeed necessary for the purpose of preventing material harm or imminent danger or other similar circumstances. The court will consider four elements when determining whether to issue a preliminary injunction: (a) the possibility that applicant might succeed in its underlying claim; (b) whether the court’s preliminary injunction might cause irreparable damage to either party; (c) the degree of damage to both parties; and (d) the impact the preliminary injunction might have on the public interests. The impact on the public interests will be key to the court’s consideration when determining whether to issue a preliminary injunction against pharmaceutical products because said injunction might have a significant impact on human health or disease treatment.
According to the IP Court’s records, the granting rate for preliminary injunctions in cases in relation to patent and other intellectual property rights is approximately 39.17% (from 2008 to June 2019), and of the 120 applications, 47 were approved.
Under Taiwan’s IP practice, before the IP Court issues a preliminary injunction, the IP Court will require the infringing party to file a brief responding to arguments made by the moving party. Hearings may be held by the IP Court if necessary. A preliminary injunction could be enforced right by the moving party after the court issues the same, no matter whether the infringing party appeals the preliminary injunction. In other words, the moving parties do not have to wait for a preliminary injunction to become conclusive and finalized. In cases where the IP Court grants preliminary injunctions, the IP Court often requests the moving party to post a bond that could be used to compensate the infringing party’s potential loss due to the enforcement of the preliminary injunction in the events that the preliminary injunction was later set aside by appellate courts.
Interim injunctions are available but difficult to obtain in Thailand. These include an ex parte preliminary injunction, sought prior to filing an action, and an inter parte interim injunction, sought during an action.
In general, the patentee (plaintiff) must provide the court with (a) proof of ownership in the patent, (b) evidence of infringement, and (c) sufficient reasons or justifications for the preliminary/interim injunction to be granted, such as (urgent) irreparable harm which cannot be addressed by monetary compensation or any other form of indemnity.
The patentee’s application for a preliminary injunction (prior to the filing of the lawsuit) is typically conducted as an ex parte proceeding. The IP&IT Court will take into account the nature and extent of damages that both parties may incur if the preliminary injunction is granted and the difficulty of enforcing the judgment against the alleged infringer. If a preliminary injunction is granted, the applicant must file an action relating to the preliminary injunction application within 15 days from the date on which the preliminary injunction is granted, or within the period provided by the court. If the applicant fails to do so, the provisional measures will be withdrawn on expiry of that period. On the other hand, an application for an interim injunction (after the patent action has commenced) is normally conducted as an inter parte proceeding.
As intellectual property rights can be irreparably and irrecoverably damaged by third-party acts, injunctions play a significant role in litigation. Injunctions are effective tools in patent litigation to preserve the results which plaintiffs hope to achieve.
The legal framework and criteria for injunctions in Turkey are outlined by the CPL and the IP Law.
Injunctions can be obtained before or during a trial. To obtain an injunction, the requesting party must prove to the court's satisfaction that:
- irreparable harm will arise if the injunction is not granted; or
- the outcome which the requesting party seeks in its main action will be unlikely unless the injunction is granted.
The IP courts are conservative in rendering of preliminary injunction decisions, as such decisions generally directly relates to restriction of a property right.
In patent litigation, upon receipt of a preliminary injunction request, a common approach for a court is to handle the preliminary injunction procedure as follows:
- Even though it is left to the discretion of the judge to conduct the preliminary injunction proceedings ex-parte, the judges generally determine a hearing date to hear both parties’ arguments on the injunction. The hearing is generally scheduled within a month following the request.
- At the hearing, the judge decides to send the file for expert examination, as generally the merits of patent litigation involve with a technical issue. The report is prepared within one to two months.
- The judges generally grant their decision in line with the report in return of payment of a guarantee. The guarantee may be between EUR 5,000 to EUR 100,000 or more which may vary according to the value of the patent and the parties’ economic situation.
- The expert report is notified to parties, who then two weeks to file objections.
These steps generally take around one to three months.
Interim injunctions are available to patentees on application to the court. This is an equitable remedy granted in the exercise of its discretion on a case by case basis. The court considers the grant of an interim injunction to be quite an onerous measure, such that they are less frequently awarded outside of the life sciences context, where for example, the launch of a generic or biosimilar product may lead to irreparable market loss and price erosion. The highly fact-specific nature of the enquiry for the grant of an interim injunction in the UK is illustrated by the contrasting outcomes in interim injunction applications sought in respect of “skinny label” and “full label” generic pregabalin products. In Warner-Lambert Company LLC v Actavis Group Ptc EHF & Ors  EWHC 72 (Pat), Arnold J refused to grant an interim injunction in respect of a ‘skinny label’ generic product (whose marketing authorization excluded the relevant patented indication), but later granted interim injunctions in Warner-Lambert Company LLC v Sandoz GmbH & Ors  EWHC 3153 (Pat) in respect of full label generic products (whose marketing authorization included the relevant patented indication).
As the price for obtaining an interim injunction, the court may require that the applicant give an undertaking in damages, whereby it agrees to pay damages to the respondent for losses caused by the grant of the injunction if it later eventuates that the injunction was wrongly granted. Injunction applications are usually heard on an inter partes basis (i.e. on notice to the alleged infringer), and can be heard within a couple of weeks of the application being made, or if necessary, even in a matter of hours or days if there is a launch at risk where patent rights exist (as in the case of Teva’s launch of an atorvastatin product before the expiry of Warner-Lambert’s paediatric extension).
In order for an interim injunction to be granted, under Section 37 Senior Courts Act 1981, the court must be satisfied that it is “just and convenient”. This is generally established by following the test developed in American Cyanamid Co (No 1) v Ethicon Ltd  UKHL 1. Firstly, there must be a serious question to be tried on the merits. All that needs to be shown is that the patentee’s cause of action has substance (i.e. some prospect of success). At this stage, the court will not attempt to resolve disputed questions of expert testimony by conducting a mini-trial.
If this first step is satisfied, the court will go on to consider the “balance of convenience”. Some key considerations relevant to whether the balance of convenience favours of the grant of an interim injunction are:
- Would damages be a sufficient remedy for the patentee if they were to succeed at trial?
- Will the patentee's cross-undertaking in damages adequately protect the respondent if the court grants interim injunctive relief which, at trial, proves to have been wrongly granted?
- Where the above factors are evenly balanced between the parties, the court will consider the balance of convenience more generally by looking at “special factors” specific to the dispute. If the court is still unsure as to whether the test has been made out, it will grant the injunction to ensure maintenance of the status quo.
Any delay in applying for an interim injunction will reduce the likelihood of obtaining one. The longer the applicant has managed without an injunction, the less likely the court is to be convinced of the need for one.
Ex parte injunctions (i.e. without notice to the alleged infringer) are available in very exceptional cases, such as where the matter is so urgent that there may not be time to notify the defendant, or where there is a real concern that the defendant may seek to dispose of evidence (see generally CMI-Centres for Medical Innovation, Dr Christoph von Keudell  EWHC Patents 308). Ex parte applications can be heard quickly, usually within a few days of making the application, but the applicant will need to address the need for urgency in its application. The patentee will usually be required to make certain undertakings to the court, for instance that it will commence proceedings by issuing and serving a claim form.
As an ex parte hearing is one-sided, an applicant is under an obligation of full and frank disclosure and must therefore disclose all matters that are material to the court (including legal principles that are not in its favour), and the court has discretion to impose sanction if the applicant does not comply with this duty. If an ex parte injunction is granted, the court will usually make provision for a return date hearing, at which the respondent may contest the injunction.
Federal district courts can grant preliminary injunctions, but such injunctions are regarded as an extraordinary remedy. In order to obtain a preliminary injunction, a patent owner must demonstrate a substantial likelihood of success on the merits, the prospect of irreparable harm absent an injunction, that the balance of harms from an injunction supports granting the injunction, monetary damages would be inadequate, and the public interest favors the injunction. Preliminary injunctions are thus difficult to obtain and are generally only granted in suits involving direct competitors. Ex parte preliminary injunctions are even more rare and would arise if the accused infringer failed to make an appearance or defend the proceeding. When a court issues a preliminary injunction, it requires the patent owner (unless indigent) to post a bond covering the economic harm that would befall the accused infringer if the injunction is later found to be erroneous.
Preliminary relief is available, and typically includes the following:
- Seizure of the infringing goods
- Prohibiting certain acts (such as importing and distributing the infringing goods).
The patent holder must prove to the court that its request for a preliminary injunction is reasonable. The request is deemed reasonable in the following circumstances:
- There is a demonstrable risk of irreparable damage caused to the patent holder; or
- There is a demonstrable risk of removal or destruction of potentially infringing goods or evidence of infringement, if not protected in a timely fashion.
Ex parte injunctions are possible as there is no statutory requirement for the court to serve a notice on the defendant. Also, under current practice, the court is unlikely to grant a cross-border or extra-territorial preliminary injunction.
Preliminary injunction proceedings cannot take place without the main proceedings. An application for injunctive relief can be lodged with the court at any time during a civil action and even at the time of filing the complaint. If the application is filed before the trial, the judge in charge of the case will consider and decide on the preliminary injunction. If the application is filed during the trial, the judging panel will decide.