How readily are final injunctions granted in patent litigation proceedings?

Patent Litigation

Australia Small Flag Australia

Although the Court has a discretion whether to grant a permanent injunction, permanent injunctions prohibiting a respondent from engaging in specific activities in relation to a patent for the duration of its term are usually imposed.

Unlike the position under United States law, there is no requirement that the Court must find that an award of damages would be an inadequate remedy before a permanent injunction is granted.

Austria Small Flag Austria

If validity and infringement are proven in main proceedings the courts will grant a final injunction, which upon becoming enforceable forces the defendant to immediately stop all infringing activities (see Questions 4 and 5).

Public interests are rarely taken into account in the decision to grant a final injunction. There is no possibility that instead of an injunction the payment of royalties is ordered.

Under certain circumstances, the infringer may potentially claim a compulsory license in a separate proceeding (Sec 36 and 37 PA). However, this has little relevance in practice (the last decision on compulsory licenses dates back to 1972).

Brazil Small Flag Brazil

Permanent injunctions are mandatory upon the finding of infringement.

Canada Small Flag Canada

As discussed above, although permanent injunctive relief is an equitable remedy at the court’s discretion, it is typically awarded where the court has found a patent to be valid and infringed.

China Small Flag China

For patent litigations, the court judgments would mostly enforce a final injunction along with an award of damages. However, the court may, based on the consideration for national interests and public interest, opt not to rule that the respondent stop the infringement, and instead order the respondent to pay the corresponding reasonable expenses. As for the account of the expense, there is no clear legal provisions and it is judge’s discretion.

Czech Republic Small Flag Czech Republic

The granting of an injunction is not discretionary if infringement is found by the court.

France Small Flag France

A permanent injunction request is quasi-systematically granted when the patent is declared valid and infringed, provided that such injunction be requested by the claimant.

In very few cases the judge may discretionary refuse to grant a permanent injunction, notably on the basis that the infringer has ceased its activity or has already undertaken to put an end to the infringement or the patent is about to expire.

Germany Small Flag Germany

An injunction is granted automatically in case the court finds the product/process to infringe the patent. The court has no discretion; other factors, such as public interest, are generally irrelevant and are not to be considered.

Greece Small Flag Greece

In order for a petitioner to be granted a permanent injunction, it must prove the existence of serious infringement. The petitioner must also prove novelty and inventive step of the invention, if the defendant raises objections in this respect.

India Small Flag India

Where the patentee is able to prove infringement after final arguments, in most cases injunction follows. However, the courts have held that any permanent injunction shall be granted only for the term of the patent. A mere delay would not be a reason enough for refusal of a permanent injunction. Courts have inherent powers to grant injunctions. Only acquiescence or totally unexplained delay is a defense. The Defendant using laches as a ground of defense would have to establish that the delay was unreasonable and without cause and that such delay materially prejudiced him or her. Injunction may not be granted where the terms of patent was to expire in few months. In F. Hoffmann La Roche v Cipla, RFA (OS) 92/2012 order dated 8th December 2015, the Delhi High Court held that since the patent was expiring in 3-4 months and there was no injunction operating against the Defendant, the Court despite holding infringement held that instead of an injunction, the Defendant would be liable to render accounts concerning manufacture and sale of the infringing product.

Ireland Small Flag Ireland

Final injunctions are routinely granted if the plaintiff is successful at the trial of the action where there is an act to be restrained on an on-going basis and damages alone are not an adequate remedy. However, as a general principle of Irish law, the Irish Courts may refuse to grant a final injunction if it is considered that an award of damages alone would be an adequate remedy.

Israel Small Flag Israel

Unlike US law or the potential position under the EU Enforcement Directive, or even the relatively recent Israeli Copyright Act, the Israeli Patents Act does not provide that considerations of equity, proportionality or any other factors may limit or deny a final injunction. Moreover, a final injunction is considered under Israeli case law as the first and foremost remedy to which the patentee is entitled, and is granted as a matter of course. Nevertheless, one relatively recent Supreme Court decision, while considering the right to final injunction under the Israeli Plant Breeders Right Act, implied that final patent injunctions could (also) be limited or denied in "extreme and rare cases" of "bad faith and misuse of rights" by the plaintiff. Moreover, a concurring opinion in this decision implied that public interest factors may also be considered in this respect. In any event, it is yet to be seen if these Supreme Court dicta will have any impact on the grant of final patent injunctions in Israel.

In appropriate circumstances, Israeli courts will also grant injunctions restraining the use of the ‘poisoned fruit’ of the infringement such as data accumulated in infringing the patent. Moreover, according to District Court case law, the use of the ‘poisoned fruit’ of the infringement can be enjoined even after the expiration of the patent.

Italy Small Flag Italy

Provided that the patentee has applied for injunctive relief upon filing its action, the grant of injunctive relief is generally perceived as consequential to a finding of infringement. That being said, the proportionality principle which judges are required to take into account when applying injunctions and corrective measures (which follows from Directive 2004/48) may be invoked to at least calibrate the effects of the injunction and ensure that they are commensurate to the infringing conduct and, importantly, to public interests.

Japan Small Flag Japan

In a lawsuit in which a claim for an injunction has been filed, if the existence of patent infringement (the existence of possible patent infringement when talking about a claim for the prevention of infringement) is admitted as of the end of the oral proceedings, the court will automatically allow the injunction to take effect.

Norway Small Flag Norway

See answer to question 24 above

Poland Small Flag Poland

Injunctive reliefs are believed to be the most adequate measure adopted in case of a patent infringement. Only exceptionally the court may dissent from this principle and the circumstances under which it may occur are provided in the relevant legal provisions.

If the plaintiff proves the infringement, as well as other necessary circumstances, depending on the kind of the enforced claims, the discretion of the court in ordering remedies is rather limited. The only discretionary decision which is worth mentioning is regulated in detail in the Polish Industrial Property Law – namely, the court may dismiss the injunctive relief and award a monetary compensation instead if the infringement was non-willful, the prohibition would be excessively severe for the defendant and the monetary compensation sufficiently meets the interests of the patent holder.

There is no case law which would explain specifically how the monetary compensation in lieu of the injunctive relief should be calculated.

Portugal Small Flag Portugal

VdA: The most relevant patent-related case law comes from the pharmaceutical litigation, which until recently was being discussed in the administrative courts (initially) and after 2012 before ad hoc arbitral tribunals. Now that the mandatory arbitral regime that had been enacted by Law 62/2011 was revoked by Decree-Law 110/2018, the majority of patent litigation will take place before the IP Court. From the limited number of decisions issued by the IP Court, the judges tend to address validity first and to consider foreign decisions relating to the same patent. If they decide the case in favour of the patentee, they typically grant the requested injunction.

Russia Small Flag Russia

The current Russian case law shows, that if patentee is successful in proving infringement, final injunction is usually provided by the court. The legal concept of public interest is limited to the possibility to seek compulsory licensing in some cases. The court cannot order for payment of royalty instead of permanent injunction on its own, neither can a plaintiff substitute permanent injunction claim to monetary claim, since such substitution is considered a change of subject matter and ground of a suit, meanwhile changing of both is prohibited.

Singapore Small Flag Singapore

Generally, final injunctions are prayed for in the Plaintiff’s Statement of Claim. While the Court retains discretion as to whether a final injunction should be granted, if the Court eventually finds that the patent in the suit has been infringed, the Court will generally grant the final injunction.

The standard form of final injunction is one which restrains the defendant 'from making, disposing of, offering to dispose of, using, importing and/or keeping whether for disposal or otherwise products which infringe the patent in issue, and/or using or offering for use in Singapore processes which infringe the patent in issue’.

A successful plaintiff is also entitled to damages as compensation for the loss that it suffered due to the infringement. Typically, patent infringement claims are bifurcated, and damages are assessed at a separate inquiry held subsequent to the infringement trial. In a great deal of cases, the proper measure of damages is a reasonable royalty in respect of each infringement committed. If the patentee habitually grants licences at a particular royalty, quantum is easy to estimate. Even if he does not, an estimate can be made. Claims to larger damages can be made, on the ground that the patentee has lost profits, or, for example, has had to reduce his prices. The onus is on the plaintiff to prove that his lost profit has resulted from the infringing acts and that if those acts had not taken place he would have made the profits. If he cannot, the reasonable royalty basis will apply. Claims are often made for other damages (for example, loss of sales of related products not covered by the patent, or loss of orders of spare parts or loss of service contracts). See also the answer to question 2 above.

South Korea Small Flag South Korea

Korean courts grant permanent injunctions if patent infringement is found and does not consider other factors such as balance of hardship or public interest.

Sweden Small Flag Sweden

The Patent Act provides final injunctions as a remedy at the discretion of the court (it “may” grant such injunction). However, in practice final injunctions are essentially always granted on a finding of infringement. Public interest factors can be considered by the possibility to grant a mandatory license but are currently not an issue in deciding whether to grant an injunction. It should also be noted that intentional or grossly negligent patent infringement is penalized in Sweden so even absent a final injunction continued use of the invention would be highly problematic.

Switzerland Small Flag Switzerland

A permanent injunction is granted if the court finds that the defendant infringed the patent in suit and there is a risk that he will do so again (risk of repetition), or that an infringement by the defendant is imminent (risk of first infringement).

Taiwan Small Flag Taiwan

When the patentee establishes the infringement, i.e., the fact that the infringing products fail within the scope of the asserted claims, the IP Court will usually grant a permanent injunction that prohibits the defendants from continuing any infringing activities.

Thailand Small Flag Thailand

The IP&IT Court has discretion to define and grant a permanent injunction as the court may deem appropriate, provided that it is within the scope of remedies requested by the plaintiff in the complaint. Consequently, if the scope of the injunctive relief requested in the complaint is broad, then the permanent injunction awarded by the court can also be broad. However, the court may deny or limit the permanent injunction, if there is an appropriate reason to do so.

Turkey Small Flag Turkey

There are only preliminary injunctions regulated under Turkish Law, and there are not any final injunctions regulated. However, the crucial part of an infringement verdict is the ban and seizure of the defendant’s infringing acts, subject to the action.

United Kingdom Small Flag United Kingdom

In the UK, while final injunctions are ordinarily granted in respect of apprehended acts of infringement following a finding of patent infringement, the grant of an injunction remains an equitable remedy that is granted in the exercise of the court’s discretion, and is not granted as of right to a successful party.

It is noted under Article 3(2) of the IP Enforcement Directive that the measures, procedures and remedies provided by Member States shall be among other things, ‘proportionate’.

Accordingly, there may be circumstances where a UK court refuses to grant a final injunction, instead granting a monetary remedy in lieu of an injunction (i.e. Lord Cairns’ Act damages), or perhaps granting an injunction in a narrower form than it otherwise would, carving out permitted acts of infringement subject to the payment of damages. In Edwards Lifesciences LLC v Boston Scientific Scimed Inc [2018] EWHC 1256 (Pat), consequent upon a finding of patent infringement, the court carved out from the scope of a final injunction (which it also stayed) use of an infringing medical device in a particular patient population for whom that device was the only medically suitable device, and instead granted a royalty in respect of any such device sales.

The decision to grant damages in lieu of an injunction will be made in light of all of the circumstances and each case will very much turn on its facts, but some relevant factors include whether the size of the injury to the plaintiff’s legal rights is small, whether it is capable of being estimated monetarily, whether it is one which can be adequately compensated by a small monetary payment, and further, whether it would be oppressive to the defendant to grant an injunction.

Considerations which may favour the refusal of an injunction include: the public interest, whether any persons are likely to suffer any negative health impacts (such as in the case of an infringing medical device or medicinal product where there is no direct substitute), the potential impact of an injunction on consumers, the remaining length of the term of the patent, the contribution of the infringed invention to the overall product (such as in the case of a multi-component product like a mobile phone or connected car), or the proportion of a supply of a given product that will be put to an infringing use.

It has been observed, however, that where the right sought to be enforced by the injunction is a patent, the court must be very cautious before making an order which is tantamount to a compulsory licence in circumstances where no compulsory licence would be available. Accordingly, where no other countervailing right is in play, the burden on the party seeking to show that the injunction would be disproportionate is a heavy one.

Conversely, there may be circumstances, particularly in a FRAND context where the typical remedy is a licence on terms set by the court rather than an injunction, where the court may nonetheless decide to grant an injunction. For instance, in TQ Delta LLC v Zyxel Communications Ltd & Anor [2019] EWHC 745 (Pat), the court decided to grant injunctive relief in view of the defendants’ “hold-out” behaviour. Whilst this case is fact-specific it provides a good example of the fact that an injunction is a discretionary remedy and that numerous different factors can be taken into account by the court when deciding whether to grant an injunction.

Where a final injunction is not ordered, the basis upon which damages awarded in lieu are calculated will vary in light of all of the circumstances.

United States Small Flag United States

Before the 2006 Supreme Court decision in eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006), final injunctions were regularly granted in the United States upon a judgment of infringement and validity. That decision, however, tightened the standard. Courts now consider the following factors in deciding whether to issue a permanent injunction: (1) the patentee’s irreparable injury; (2) remedies at law being inadequate to compensate for the injury; (3) the balance of hardships favouring an injunction; and (4) the public interest not being disserved by the injunction. Under this test, direct competitors in a patent case are sometimes able to obtain a preliminary injunction. NPEs, on the other hand, rarely are able to do so. For NPEs, since monetary damages is usually adequate to compensate for the infringement, an injunction is unwarranted.

Vietnam Small Flag Vietnam

The court is often ready to grant the final injunction if it expressly finds the infringement. We are not aware of any cases where the court gave weight to the public interest in ruling on a dispute. Generally, for the public interest, the concerned parties might raise this matter in another forum, such as seeking compulsory licensing before the administrative authorities.

The court determines damages based on the principles set out in the answer to Question 25.

Updated: November 8, 2019