In recent weeks the Kluwer Patent Blog has published two shorts posts on the topic of whether courts may entertain a request for preliminary injunctive relief prior to patent grant. The first post, by Matthieu Dhenne, is titled A preliminary injunction can be based on a patent application, and discusses a recent decision of the Paris High Court. The applicant, Novartis AG, has a pending European Patent application (EP 2 959 894) relating to the treatment of MS using fingolimod hydrochloride. According to the post (no decision is attached), the "EPO Board of Appeal had ordered the Examining Division to grant the patent on the basis of one of the claims," but the patent has not yet issued. The post states that the court denied the request for preliminary relief, but "accepted its admissibility of the basis of the patent application." The other post, by Anders Valentin, is titled Danish court dismisses application for a PI based on a patent application. This post discusses a decision (also not attached) of the Danish Maritime and Commercial Court, involving--guess what?--the exact same patent application, on the basis of which Novartis applied for a preliminary injunction in Denmark. According to this post, the Danish court denied the request, noting that because there is still no formal EPO decision to grant the patent, "it is uncertain that the patent will have effect in Denmark," and also that there is a possibility "the patent could still be amended."
This is an unusual issue. As Mr. Dhenne points out, there could be situations in which "urgency" might seem to counsel in favor of hearing such a case, though he also states that a strict reading of the text of the relevant French statute would not permit this; and there could be no opposition proceeding to challenge validity until the patent issues. For my part, I'm inclined to think that courts shouldn't grant preliminary injunctions in advance of grant, ever, though I wonder if there might be cases in which it would be advisable to consider a preliminary injunction conditioned on subsequent grant. Temporary stays of permanent injunctive relief, after all, are not uncommon under U.S. law, and are available (in theory, at least) under German law as well (e.g., to enable design-around or sell-off). Still, I'm not sure this is a good route to go down in the preliminary injunction realm, because of the obvious risks to the defendant--among them, that compensation for being wrongly enjoined may be incomplete after the CJEU's Bayer v. Richter decision (see, e.g., here).
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