News from France on Injunctions

1.  Benjamin May and Marie Liens have published an article titled Brevets Pharmaceutiques:  Approche Pratique du Contentieux des Mesures d'Interdiction Provisoire ("Pharmaceutical Patents:  A Practical Approach to Litigating Provisional Measures") in the June 2014 issue of Propriété Industrielle.  Here is the abstract (my translation from the French):  

The launch of a generic drug is a sensitive moment:  too early, and the patent owner can obtain an injunction; too late, and the generic firm will lose the boost of being the first on the market and will see its profit margins fall.  The present study proposes an analysis of the pivotal dates of the process as well as a practical approach to litigation options.  

The relevant portion of the French Intellectual Property Code is article 615-3, which I discuss in my book at pp. 242-43.  In relevant part, the statute reads:

Toute personne ayant qualité pour agir en contrefaçon peut saisir en référé la juridiction civile compétente afin de voir ordonner, au besoin sous astreinte, à l'encontre du prétendu contrefacteur ou des intermédiaires dont il utilise les services, toute mesure destinée à prévenir une atteinte imminente aux droits conférés par le titre ou à empêcher la poursuite d'actes argués de contrefaçon. La juridiction civile compétente peut également ordonner toutes mesures urgentes sur requête lorsque les circonstances exigent que ces mesures ne soient pas prises contradictoirement, notamment lorsque tout retard serait de nature à causer un préjudice irréparable au demandeur. Saisie en référé ou sur requête, la juridiction ne peut ordonner les mesures demandées que si les éléments de preuve, raisonnablement accessibles au demandeur, rendent vraisemblable qu'il est porté atteinte à ses droits ou qu'une telle atteinte est imminente.

My very unofficial translation would be something like this:

Any person with a right to assert a claim for infringement may commence an emergency civil proceeding to obtain, if necessary under compulsion, against an alleged infringer or the intermediaries whose services he uses, any measure intended to prevent an imminent harm to the rights conferred by this act or to cease alleged acts of infringement.  The competent civil court may also order any such urgent measures ex parte when the circumstances demand that they be taken without opposition, especially when any delay may be of a type to cause irreparable harm to the movant.  In either case, the court should order the requested measures only if the elements of proof, reasonably accessible to the movant, make it probable that it is suffering an injury to its rights or that such an injury is imminent.    

The authors state that ex parte (sur requête) injunctions are almost never granted, and provide some examples from the case law (pp. 17-19).  They also note that preliminary injunctions are granted only in about a third of the pharmaceutical cases in which they are requested (p.20).  The discuss which actions on the part of the defendant qualify as potentially imminent acts of infringement (pp. 16-17).  They also note conflicting positions on the question of the extent to which the judge hearing the motion for a preliminary injunction may consider the validity of the patent.  The current version of article 615-3 uses the word "vraisemblable" (probable) in place of the former version's "caractère sérieux de l’action au fond" (serious nature of the underlying action), and some though not all judges have taken this to mean that they may consider invalidity (as opposed to infringement) only when it is manifest, rather than probable.  They also note, among other things, that judges only rarely order the patentee to provide security, although as in many countries the defendant against whom a preliminary enjoined is ordered may subsequently demand compensation if, for example, the patent is invalidated (though in France, as in the U.S., not if the invalidation occurs after the judgment has become final).

2.  The August 1, 2014 issue of  Propriété Industrielle Bulletin Documentaire (PIBD) reprints Written Question E-005062-14 of April 17, 2014 submitted to the European Parliament by Marc Tarabella, and the response dated July 4, 2014 by M. Barnier in the name of the European Commission.  The question and answer are also available from the European Parliament's website, so I'll reprint them in their English translation from that source:

Subject:  A European Unified Patent Court faced with a twin-track court system  

A working group consisting of representatives of the Member States is currently examining the draft regulation of the Unified Patent Court. The 15th draft regulation allows a twin-track procedure in two independently competent courts, one which rules on questions relating to the validity of a patent, the other on questions of breach. 

This introduces a considerable risk, namely that the Court determining a breach could issue an injunction excluding products from the market before the court with competence over validity has established that the patent is valid, thus penalising European companies even though their behaviour is entirely lawful.

Meanwhile, the Directorate General for Competition is concerned about abuses of a dominant position by companies which have sought to abuse their patent rights.

Does the Commission agree with injunctions that should not be applied on invalid patents?

Joint answer given by Mr Barnier on behalf of the Commission 

Written questions :E-005062/14 , E-005064/14 , E-005065/14

The questions raised by the Honourable Member concern the on-going work on the creation of the Unified Patent Court (UPC) and all raise similar concerns.

The Commission respectfully refers the Honourable Member to its reply to Written Question E-012200/13 and notes again that the Agreement on a Unified Patent Court (UPC) is an agreement concluded under international law and which, as such, is not part of EC law. As concerns the conditions for the granting of preliminary injunctions in the procedure before the UPC, in the abovementioned reply the Commission already provided the relevant factual information. In addition to that, the Commission may only reiterate that the Rules of Procedure in respect of the questions raised by the Honourable Member must provide for the requisite legal certainty. As to the measures taken by the court, they will have inter alia to comply with the basic principles of fairness, equitable treatment and proportionality.