Pages 102-128

WORKING SESSION

The Unified Patent Court

Paul GALLAGHER - Barrister, the Bar Council of Ireland - Injunctive relief - experiences in common law and civil law jurisdictions

Introduction

1. In 1852 the great German Jurist and father of sociological jurisprudence Rudolf von Jhering complained that legal science had deteriorated into a provincial study.1 Thankfully that is no longer true. Lawyers in all jurisdictions operating under different legal systems are realising more and more the importance of understanding each other's systems and the benefits to be derived from sharing knowledge and experience concerning how those systems address common problems.

2. In an increasingly globalised world and in the context of the European Union which has harmonised or approximated across a wide range of legal subject matter the law applicable in many different legal systems, it is difficult to overstate the importance of encouraging an understanding of different legal systems. Today I want to speak of two great systems of law: the Common Law and the Civil Law ("the Two Systems"). Each of the two Systems has much to learn from the other. At a European level an understanding of the Two Systems will help avoid unnecessary conflicts and difficulties that arise in harmonising or approximating the laws to be applied in different legal systems.

3. As Attorney General I had frequent experience of misunderstandings at a European level with regard to aspects of the Common Law and encountered difficulties in ensuring that new legal measures accommodated differences in the Common Law approach or at least did not create unnecessary problems in that context. In most cases it is possible to accommodate the differences between the Two Systems. Frustratingly, because of misunderstandings or because of a mistaken belief that accommodating the Common Law system will create problems for legislative coherence and objectives such accommodation is not always achieved.

4. While there are real differences between the two systems there are also very substantial similarities. In researching this paper I have been struck by the significant similarities between the Two Systems in the area of patent enforcement by way of injunctive relief (and in particular between the Common Law and German and French law). This convergence of legal rules reflects the ultimate legal imperative underlying both systems, namely the requirement that the law should facilitate innovation and create an environment conducive to innovation and investment.

5. Recital 1 to Directive 2004/48 ("the Enforcement Directive") explicitly recognises the need to create such an environment for innovation and investment and that the creation of the internal market entails eliminating restrictions on freedom of movement and distortions of competition. It recognises that protection of intellectual property is an essential element for the success of the internal market and therefore it is necessary to ensure in particular that the law enforcing such rights is approximated. The accession of all European countries to the Paris Convention and PCT and in the case of European Union countries, the accession to EPC, as well as the impact of the EU Treaties and patent legislation, means there has been a significant degree of approximation of substantive national patent law throughout Europe with one of the main differences arising in connection with the construction of claims in infringement and revocation proceedings.2

6. As lawyers immersed in our own systems we each tend to assume that our own system provides the best legal solutions. It is obvious, however that each system can learn from the other. Information does not recognise boundaries. The world community normally benefits from the dispersal of information and from the understanding and developments which new information generates. The area of law might at first glance be considered an exception, in that information on the law and developments within the law have, at least initially, a primary impact on, and relevance to, the participants in the legal system in which the information and developments are generated. A moment's reflection brings the realisation that insights into the operation of legal rules and the development of those rules, wherever generated, have the potential to be relevant to other legal systems. If one accepts that law provides the structure within which society operates and that society's utility curve is a function of good laws then any information that assists in improving the efficiency and effectiveness of the legal system is of great importance.

7. Our lives are governed more and more by legal rules. It is in everybody's interests to ensure that those legal rules reflect the best legal thinking and are designed to achieve the best outcomes. That objective is facilitated if we open our minds to developments in other legal systems and enrich our understanding of legal issues by learning about those other systems and where appropriate adopting solutions provided by those other systems. The impact of those legal rules on society and the economy can be enormous and can have significant unintended effects. This is an area of significant investigation and commentary in the United States by Judge Richard Posner and Professor Cass Suntein and many others. Of course in many cases the adoption of such solutions will be a matter for national legislatures and not for judges. Nevertheless judges and lawyers through their judgments and legal work frequently provide the information on which legislatures subsequently act.

8. We live in an age of technological acceleration caused by a flood of new products reflecting competition, openness, connectivity and the rapid expansion of human activity. It is a difficult task to ensure that the law develops in a way that accommodates and does not inhibit the momentous changes which occur at a frighteningly fast pace. For example in the area of computer technology alone we have progressed within a space of 60 years, from vacuum tube computers filling entire rooms to the ubiquitous computer chip freed from the computer and dispersed in the environment. While lawyers are often criticised (mostly unjustly) for not keeping abreast of changing trends in society and of developments outside the legal sphere which need to be reflected in the law, it is comforting to note that others have often sinned more grievously in this regard. A little over a century ago, in 1899, Charles Duell, Commissioner of the US Office of Patents, famously said:

"Everything that can be invented, has been invented".

EU law and developments

9. Before considering the differences between the Two Systems it is worth briefly mentioning the developments at a EU level which have impacted on those Systems. These laws are designed to provide a legal environment conducive to, and protective of, innovation.

10. The Enforcement Directive is designed to achieve such a purpose by approximating the laws and removing significant disparities between the legal systems of the different Member States with regard to the enforcement of patent law. There is little doubt that the Directive has been very successful though it is undoubtedly the case that the system of enforcement in different Member States can differ very significantly.3

11. Article 1 of the Enforcement Directive states that it concerns the measures, procedures and remedies necessary to ensure the enforcement of intellectual property rights. It is without prejudice to any more favourable rights enshrined in national legislation. Obviously the Directive has had greater impact in some Member States than in others. In Ireland the implementing regulation4 is very short and principally deals with orders for disclosure of information provided for in Article 8 and for the recall, removal or destruction of goods, as provided for in Article 10. No further implementing measures were necessary because of pre-existing remedies available in Irish law including the ready availability of injunctive relief and ancillary orders. The Directive reflects the recognition by courts in all jurisdictions of the necessity to expand available remedies to protect intellectual property rights in the modern technological environment.

12. The Anton Piller Order and the Megaleasing Order provide key remedies in ensuring the preservation of evidence for trials so that trials are not frustrated due to lack of evidence. An Anton Piller Order is directed at a defendant personally and normally requires him immediately to permit the plaintiff and the plaintiff's solicitor to enter a premises for the purpose of allowing them to look for, inspect, copy and take into their custody, certain specified items and to disclose forthwith to the plaintiff's solicitor the whereabouts of the specified items. The plaintiff is not authorised to forcibly enter a defendant's premises. The plaintiff must seek the defendant's permission but a refusal amounts to a contempt of court. The standard to be met when applying for an ex-parte Anton Piller Order is higher than that usually required for an interlocutory injunction. In Microsoft Corporation v Brightpoint Ireland Limited5 Smyth J. held that a strong prima facie case was the relevant applicable test. The court also has jurisdiction to make what is known as a Bayer Order6 to ensure the more effective execution of an Anton Piller Order. These Orders (exceptionally granted) restrain the defendant from leaving the jurisdiction without leave of the court and require him to deliver up his passport and other travel documents to the Plaintiff's solicitors.7

13. The Supreme Court recognised in Megaleasing (UK) v Barrett8 that the courts also have a jurisdiction (to be sparingly exercised) to make an order for discovery in an action that has been instituted solely for this purpose where a very clear proof of a wrongdoing exists and it is sought to establish the identities of those responsible. An application for such an order was successfully made in EMI Records (Ireland) v Eircom Limited9 where Kelly, J. required the defendants (who were not themselves wrongdoers) to disclose to the plaintiff the names, addresses and telephone numbers of certain registered owners of internet accounts where there was prima facie evidence of wrongful activity, namely, the infringement of the plaintiff's copyright by the defendant's subscribers. A similar type of order known as the Norwich Pharmacal10 Order exists in England.

14. Of particular relevance to the present discussion is the obligation on Member States imposed by Article 9 to ensure that the courts have the jurisdiction to issue interlocutory injunctions against an alleged infringer to prevent any imminent infringement of intellectual property rights and to order the seizure or delivery of goods suspected of infringing intellectual property rights. Member States are required to ensure that the provisional measures provided for may in appropriate cases be taken without the defendant having being heard, in particular where any delay would cause irreparable harm to the rights owner. The Enforcement Directive does not of course prescribe the basis on which such relief can be granted and as will be apparent the approach of the Two Systems is different in that regard.

Injunctive relief under Irish law

15. The Patents Act 1992 as amended by the Patents (Amendment) Act 2006 enabled effect to be given to the European Patent Convention in national law. Section 47 of the 1992 Act provides for civil proceedings for an infringement of a patent and states that those proceedings may include a claim for an injunction restraining the infringement.11 This statutory provision recognised a jurisdiction which already existed since the Judicature (Ireland) Act, 1877.

16. Injunction applications are brought in the High Court and as a matter of course are now invariably brought in the Commercial Court pursuant to Order 63A of the Rules of the Superior Courts. The Commercial Court not only facilitates the hearing of applications by judges experienced in intellectual property matters but also ensures a very early and efficient hearing for interlocutory applications as well as the trial of the action.

17. Under Irish law in cases of extreme urgency an injunction known as an interim injunction can be granted ex parte pending an immediate application for the grant of interlocutory relief on notice to an alleged infringer. However interim injunctions are sparingly granted because a court will normally take the view that in most cases there is no reason why an alleged infringer should not be put on notice of the application for an injunction even if it means that the alleged infringement continues for a few days. In cases of urgency the court will grant liberty to serve a notice of motion returnable within a day or two and at that preliminary hearing an alleged infringer may frequently offer an undertaking not to continue the alleged infringement pending the hearing of the interlocutory application in order to obtain an extension of time for answering the claim for an injunction.

18. The legal basis on which a court will grant interlocutory relief prior to the hearing of the action is set down in the Supreme Court's decision in Campus Oil v Minister for Industry Energy & Others (No. 2).12 In that case it was the defendants who sought, pursuant to their counterclaim interlocutory relief requiring the plaintiff oil companies to continue to purchase oil from the State's refinery. This case was in fact consistent with the earlier decision of the Supreme Court in 1961 in Education Company of Ireland Limited v Fitzpatrick and Others13 but it removed any residual doubt as to the applicable test. In Campus Oil the Supreme Court made it clear that in order to meet the first requirement (relating to the strength of the claim) for obtaining an interlocutory injunction it is sufficient for a plaintiff seeking an injunction to establish that there is a "serious question" to be argued and it is not necessary for the plaintiff to show that it has a prima facie case or that it would probably succeed at the trial of the action. This view was arrived at taking into account the nature of interlocutory hearings which are necessarily abbreviated and the format of which prevents the court determining issues of credibility having regard to the fact that evidence is given on affidavit and there is no cross-examination of witnesses. The Supreme Court stated that to apply a standard requiring a demonstration of a prima facie case would involve the court in a determination of an issue which properly arises for determination at the trial of the action. Once a serious question has been raised the court should consider whether the other requirements for interlocutory relief are met and in that regard the court agreed with the views expressed by Lord Diplock in the House of Lords decision of American Cyanimid v Ethicon as to correct approach in considering those requirements.14

19. In Ireland therefore it is no part of the court's function at the interlocutory injunction stage to try to resolve conflicts of evidence on affidavit as to facts nor to decide difficult questions of law which call for detailed argument and mature consideration. These are matters to be dealt with at the trial and reflect an approach which concentrates on the commercial consequences of an injunction once a serious question has been demonstrated. This recognises that within the Irish legal system the full trial of the action will involve an oral hearing and a very thorough and detailed examination of the evidence and assessment of the credibility of witnesses. One of the reasons for the introduction of the practice of requiring an undertaking as to damages upon the granting of an interlocutory injunction is that it aids the court in doing what Lord Diplock has described as "its great object of abstaining from expressing any opinion on the merits of the case until the hearing."

20. Once a serious question has been demonstrated the court will then go on to consider the question of the necessity for injunctive relief and this in effect involves a consideration of whether damages would provide an adequate remedy for a plaintiff. If they do, no injunction is granted. If they do not, and an undertaking as to damages would compensate the defendant for any damage suffered by it as a result of it being prevented, pending trial, from doing that which it has a right to do, there would be no reason to refuse an interlocutory injunction. If there is doubt as to the adequacy of the respective remedies in damages the court goes on to consider the balance of convenience which in truth involves not an assessment of convenience but of the justice of the case.

21. In considering whether damages are an adequate remedy the court is guided by the principle in Curust Financial Services Limited v Loewe15 where the then Chief Justice Finlay said:

"The loss to be incurred by Curust if it succeeds in the action and no interlocutory injunction is granted then is clearly and exclusively a commercial loss, in what had been, apparently a stable and well-established market. In those circumstances, prima facie, it is a loss which would be capable of being assessed in damages both under the heading of loss actually suffered up to the date when such damages would fall to be assessed, and also under the heading of probable future loss. The difficulty, as distinct from complete impossibility, in the assessment of such damages should not in my view be a ground for characterising the award of damages as an adequate remedy … Since the issue is on affidavit and the inferences to be drawn from it was not decided in the High Court, by reason of the learned Trial Judge's view that damages are for other reasons not a good remedy, and since I find myself in disagreement with that view, it is necessary that I should reach a conclusion on the affidavit evidence as to whether it has, as a matter of probability, been established at this stage for the purposes of the interlocutory injunction that damages would not be an adequate remedy by reason of the real risk of the financial collapse of the Curust companies."

The fact that damages may be difficult to calculate does not mean therefore that they are not an adequate remedy.

22. In assessing the balance of convenience the court will exercise its discretion and will take into account such other factors as appear relevant in the context of the particular dispute. In general, the court will preserve the status quo pending trial, i.e. the situation which existed at the time the proceedings were commenced. If however there is unusual delay by the plaintiff in applying for the interlocutory injunction it will be the status quo at the time of the application which is relevant. It is for the court in any individual case to determine the factors that ought to be taken into account in assessing the balance of justice and the weight to be attached to those factors and they vary from case to case.

23. There are some decisions which suggest that the distinction between adequacy of damages and the balance of convenience is more a question of semantics than substance.16 However it is clear that the courts do not conflate both issues.17 This is important because while both tests are directed to effectively deciding whether an injunction is necessary and appropriate. If damages are an adequate remedy for a plaintiff an injunction is necessarily inappropriate, and should not be granted. This is so even though the right allegedly infringed is a property right. The fact that the right is a property right is a factor more properly taken into account in assessing the balance of convenience and will tip the balance in favour of a plaintiff if damages are not an adequate remedy.

24. In SmithKline Beecham18 the court made it clear that there is no hostility inherent or otherwise to the grant of interlocutory injunctions in patent infringement proceedings. The test is the same as in any other case. The court, in assessing the balance of convenience in patent cases will of course take into account the fact that a defendant has commenced the commission of acts in the full knowledge of the complaint against him.

25. Normally in circumstances where for example a defendant is prepared to keep a record of all of the sales of the allegedly infringing product and an early trial is possible then an interlocutory injunction will be refused unless the Plaintiffs can point to some particular feature giving rise to an irreparable loss.

26. A plaintiff should not delay in seeking an injunction and delay can result in the injunction being refused on a discretionary basis. However delay is not an automatic bar to an injunction and the rules on delay are not as strict as they are in many Civil Law jurisdictions.

27. It is essential for a plaintiff in order to obtain an injunction whether interim or interlocutory to provide an undertaking as to damages which is an undertaking to compensate the defendant for any damages suffered as a result of the grant of the injunction should it transpire at the trial that no such injunction ought to have been granted.

28. Letters of claim demanding that the infringing activity be discontinued are almost invariably sent prior to an application for an injunction. A failure to send such a letter does not in itself constitute a bar to injunctive relief. Obviously the failure to send such a letter could have cost implications if the court were to take the view that proceedings were unnecessarily commenced.

29. An injunction is a powerful remedy in Irish law because breach of an injunction is a contempt of court.

Position under English law

30. In general terms the position under English law is substantially the same as the position under Irish law. There is however one area of possible difference between both jurisdictions. There is some authority in the United Kingdom for the proposition that the strength of the respective cases can in certain circumstances be taken into account in assessing the balance of convenience.19 This issue is best explained by reference to the decision of Sir Robin Jacob in SmithKline Beecham v Generics UK Limited.20

31. In SmithKline Beecham v Generics UK Limited the alleged infringors made their preparations for entering the market by way of obtaining market authorisation without in any way informing the patentees. They were not obliged to do so. The court was concerned with the period between October and March when the trial would take place. The patentees' commercial product was sold under the trademark "Seroxat" and formed a very substantial part of their sales. The defendant was a generic company. The case was complicated by the fact that the patentees had recently entered into a supply agreement with a well-known generic supplier. It was accepted by the defendant that the patentees had an arguable case.

32. Jacob J. stated that he had always found the decision in Cyanamid if generalised, could cause a difficulty. He referred to Hoffman J. once speaking of "the balance of the risk of injustice" to one party or the other. To ignore the balance of who was likely to win in assessing the balance of risk had always seemed to him a strange thing to do in principle. It is not the course which is followed in other jurisdictions around the world such as Germany, France, Holland and the US.

33. He said that if the case is one in which an assessment of the likelihood of the prospect of success is itself going to be long, protracted and involved then one is really saying that one cannot make a proper assessment of risk in that regard. Such was the case in American Cyanamid. The Cyanamid rules makes particular sense when one cannot reasonably assess the prospect of success of either side. He said the case before him was also such a case.

34. A similar statement was made by Laddie J. in Series 5 Software.21 He suggested that the strength of the respective cases might be an issue which could be addressed once all the other tests had been considered. He said

"In fact as any lawyer who has experience of interlocutory proceedings will know, it is frequently the case that it is easy to determine who is most likely to win the trial on the basis of the affidavit evidence and any exhibited contemporaneous documents. If it is apparent from the material that one party's case is much stronger than the others' then that is a matter the court should not ignore. To suggest otherwise would be to exclude from consideration an important factor and such exclusion would fly in the face of the flexibility advocated earlier in American Cyanimid."

35. The general view in Ireland is that this approach is not permitted22 and in particular it is said that the decision of the Supreme Court in Westman Holdings Limited v McCormack precludes such an approach. I do not believe that such view is correct as this issue was not specifically addressed in Westman Holdings. I think it would be generally agreed that in most cases it would not be possible to conduct an assessment of the respective strengths of each party's case but there will be some cases where an assessment is possible because there are no disputed facts and there is no particularly complicated issue of law. As a matter of principle in those cases it is very difficult to understand why, if the balance of convenience is otherwise evenly balanced this could not be taken into account. Not to do so provides an unjustified advantage to one of the parties that is not mandated by any principle of law. Former Chief Justice Keane has expressed the view extra-judicially23 that the court may in such circumstances take into account the comparative strength of the parties' respective cases. A plaintiff already gains a significant advantage by merely having to demonstrate that there is a serious issue to be tried. That aspect of the injunction test is firmly weighted in the plaintiff's favour. The other two aspects of the test are balanced equally between the plaintiff and the defendant. It is not obvious why some account could not (exceptionally) be taken of the strength of the plaintiff's case, where it is possible to do this, in an assessment of the balance of convenience. The rationale for the not considering the respective strengths does not apply in these limited circumstances though it must be accepted that within the Common Law system with its emphasis on oral evidence it will rarely be possible to make such an assessment.

36. The SmithKline Beecham decision also provides an example of the approach of the English courts to the question of damages and the balance of convenience. Jacob J. decided that damages would not be an adequate remedy for either party. He concluded that if the defendants entered the market they could go as low as they liked with the price. The price would be chased down. The effect of that chasing down would be to force the patentees to lower their prices too. The potential effect of the defendants' entry into the market would be to cause a price spiral. The defendants offered to pay damages in the event of the patentees winning the action on the basis of a 1-for-1 sale by him on what otherwise would be sold by the patentee. However that would not in any way compensate the patentees for loss of market share which they probably would be unable to recover from. He concluded the patentees would probably suffer price loss and loss of market share and that this might be very substantial and that they would be impossible to calculate. So far as the defendants were concerned they were ahead of the other generic companies and they would lose the opportunity which being ahead gave them. The court thought that loss was also unquantifiable. He concluded however that the plaintiff's damage was likely to be a good deal greater than the defendants' damage. He took some account of the plaintiff's assertion that their ongoing research into other indications was threatened and if the profitability were to go out of the product that would be likely to happen.

37. In assessing the balance of convenience Jacob J. stated the defendants had known for a long time about the patent and they knew, when they set upon the project, that the patentees would cause trouble and they could have done a number of things including launching a petition for revocation. He said it was purely a matter of commercial common sense that they could have taken steps to remove the obstacle presented by the plaintiff's patent.

38. In the UK a letter of claim, while not compulsory, is normally sent. A failure to do so is likely to have cost implications. The letter of claim is usually substantial containing sufficiently concise details of the patent and the infringement.

39. The English courts also provide various forms of ancillary relief such as the Anton Piller Order, the Norwich Pharmacal Order and the Bayer Order which orders were developed originally by the English courts.

Injunctive relief in the US

40. The approach in the US is interesting. An applicant for an injunction must establish a likelihood of success on the merits. In the US an injunction will be granted provided the plaintiff can establish four factors:

1. The likelihood of the patentee's success on the merits.

2. Irreparable harm if the injunction is not granted.

3. The balance of hardship between the parties and

4. The public interest.24

41. The general rules applicable to injunctions in civil cases apply as well to injunctions in patent cases,25the test for which places the burden on the plaintiff to prove likelihood of success. In order to meet the first requirement for a preliminary injunction, it is necessary to prove that the defendant infringes at least one valid and enforceable patent claim. The US courts take the view that by definition if the patentee is not likely to succeed at trial in proving the infringement of its patent by the accused the patentee cannot have been irreparably harmed thereby and is not entitled to a preliminary injunction against the alleged infringer. Likewise in order to defeat the injunction based on invalidity or unenforceability the defendant as the party bearing the burden of proof on the issue at trial must establish a substantial question of invalidity or unenforceability, i.e. that it is likely to succeed in proving invalidity or unenforceability of the asserted patents.26 At the preliminary injunction stage the patent enjoys the same presumption of validity under law as at any other stage of the litigation. However if the alleged infringer raises a substantial question either of non-infringement or invalidity, the patentee, to carry its burden of showing a likelihood of success at trial, must establish that the challenger's defences lack substantial merit before an injunction may issue.27In effect the burdens at the preliminary injunction stage track the burdens at trial. In analysing the likelihood of success the court hears and considers all the evidence at the early stage of the litigation.

42. The US Supreme Court has more recently made it clear that a party whose patent has been infringed is not presumptively entitled to an injunction against future infringements.28 The nature of the right invaded does not in itself justify an injunction for the invasion of that right. Injunctions may issue only when the patentee meets the requisite four-factor test. In deciding whether or not to grant an injunction the court can take into account that the nature of the right to exclude, affects the remedy for its violation. Chief Justice Roberts noted that the long tradition of granting an injunction upon finding an infringement "is not surprising given the difficulty of protecting a right to exclude through monetary remedies that allow an infringer to use an invention against the patentee's wishes."29

43. The decision in eBay Inc v MercExchange30 was influenced by the increasing practice in the United States of firms using patents not as a basis for producing and selling goods but primarily for obtaining licence fees and using threats of injunctions to obtain exorbitant fees. This was particularly relevant when the patented invention was but a small component of the product the company sought to produce and the threat of an injunction was being employed to achieve undue leverage in negotiations. The court felt that the granting of an automatic injunction would not serve the public interest.

44. A plaintiff must demonstrate more than the possibility of irreparable harm. The plaintiff must demonstrate that irreparable injury is likely in the absence of an injunction.31

45. The court is required to "balance the competing claims of injury and must consider the effect on each party of the granting or withholding of the requested relief."32 If the court finds that the balance of equity favours the plaintiff that is the basis for granting the injunction.

46. The court must "pay particular regard for the public consequence" in evaluating whether preliminary injunctive relief is appropriate.33 The patent system represents a carefully crafted bargain that encourages both the creation of the public disclosure of new and useful advances in technology in return for an exclusive monopoly for a limited period of time. On the other hand the public has a substantial interest in ensuring free competition in the market place among non-infringing products,34 because "the public benefits from lower prices resulting from market competition." Rarely will the public interest be seriously affected by the grant or denial of an injunction but examples of critical public interest include cases involving national security and public health and safety.

Position under Australian law

47. Interestingly the Australian approach is much closer to that of the US than England in assessing the strength of a plaintiff's claim when considering the grant of interlocutory injunction. In Australian Broadcasting Corporation v O'Neill35 Justices Gummow and Hayne in the High Court stated:

"When Beecham36 and American Cyanamid are read with an understanding of the issues for determination and an appreciation of the similarity and outcome, much of the assumed disparity in principle between them loses its force. There is then no objection to the use of the phrase "serious question" if it is understood as conveying the notion that the seriousness of the question and the strength of the probability referred to in Beecham, depends upon the considerations emphasised in Beecham …

However the difference between this court and Beecham and the House of Lords in American Cyanamid lies in the apparent statement by Lord Diplock that provided the court is satisfied that the plaintiff's claim is not frivolous or vexatious, then there will be a serious question to be tried and this will be sufficient…Those statements do not accord with the doctrine of this court which was established by Beecham and should not be followed. They obscure the governing consideration that the requisite strength of the probability of ultimate success depends upon the nature of the rights asserted and the past legal consequences likely to flow from the interlocutory order sought."

The Australian courts adopt a similar approach to that of Ireland and England with regard to the other requirements for interlocutory relief.37

Position generally in the EU

48. All EU Member States provide at least in theory, for urgent relief through the grant of preliminary injunctions. There are differences with regard to the circumstances in which such injunctions will be granted. The Dutch Kort Geding is recognised by many as the most advanced and efficient preliminary injunction procedure because of the ease with which the Dutch courts accept urgency. This is nearly always presumed in the case of intellectual property enforcement. In Italy preliminary injunction proceedings offer an efficient means of enforcement. In Belgium a preliminary injunction can be granted even during opposition proceedings. There is significant judicial expertise and specialisation in many European countries and this is extremely helpful in ensuring the efficiencies of the judicial protection. In some jurisdictions the court can appoint experts to assist.

Position under German law

49. The position in Germany has some important comparisons with the US with regard to the grant of preliminary injunctions. There are two principal criteria. First, the claim must be soundly based. The patentee must sufficiently substantiate and prove on the basis of strong prima facie evidence that the patent has been infringed. The plaintiff must demonstrate with written documents underlying the request that the asserted patent is in force and that he is entitled to assert rights resulting from the patent in suit. This is usually demonstrated by means of an excerpt from the Patent Office register. It is also necessary to demonstrate that the patent is infringed. The injunction request describes the prior art to which the patent suit specifically refers and explains the invention and proposed claim construction. It is necessary to base all factual statements made in the request on evidence in order to render the allegations credible. This may involve the submission of samples of the accused's product, copies of documents such as promotional documents and manuals describing the application of the allegedly infringing product, photos of the allegedly infringing embodiment and affidavits.

50. If infringement had been established on the balance of probabilities and there is no reasonable doubt on the validity of the rights infringed as a rule the interests of the claimant will prevail.38 The critical issue is whether a strong prima facie case is established. A preliminary injunction cannot be granted solely on the basis of assessing its factual or commercial consequences in a balance of convenience test.

51. Because preliminary injunctions are aimed at a provisional protection of the right holder this leads to a lower degree of judicial analysis of the critical subject matter. On the other hand because an injunction will prevent somebody from commercialising their products and could endanger their business it is necessary to weigh the conflicting interests. There must be some urgency in order to fulfil the requirement of preventing considerable damage.39 Obviously if an applicant can wait until judgement in the main proceedings without suffering harm no preliminary injunction will be ordered. The patentee must move quickly having discovered the infringing actions. Some textbooks state that there is a rule of thumb that an application should be made within four weeks of discovery of the facts but this is not a fixed time limit.40

52. The German approach facilitates the acceptance of a legally fully examined case as an early and final court decision. It renders the main proceedings often unnecessary and I think it is generally accepted that the full assessment of the legal merits in interim injunctions usually produces fair results.

53. Interim injunctions will be ordered only in clear court cases. If ordered without a hearing the defendant can subsequently apply for a full evidentiary hearing within a short time and should the court then quash an unjustified injunction on the basis of the evidence the applicant will be liable to the defendant for any damages caused by the injunction. If an alleged infringer expects an interim injunction, for example, because he has received a letter of claim he can also deposit a pre-action defence41 with the courts where he expects the claim form to be filed. Comprehensive pre-action defences setting out detailed legal arguments and the facts are very common. This pre-action defence known as a Schutzschrift makes sure that the court is aware of defence arguments when considering the interim application. This can result in the court refusing an interim injunction or indeed even dismissing the application.

54. In Germany the patent holder may try to obtain a preliminary injunction in ex-parte proceedings.42Ex-parte injunctions without having an oral hearing are the exception. Some situations might occur where foreign companies present infringing products at trade shows. There may not be enough time until the end of the trade show for inter partes proceedings. In such exceptional cases an injunction can be obtained in less than 24 hours.

55. In the case of inter partes proceedings the parties are summoned for hearing. The hearing takes place generally a few weeks after the right holder's request has been filed. The infringer gets an opportunity to raise the usual defences and may show that there are no reasons for an injunction.

56. Currently approximately two thirds of all patent claims in Europe are filed in Germany.43 It has been stated that the most desirable aspect of the German patent system is the ease within which injunctions are granted. When a litigant succeeds in an action for infringement an injunction is immediately available.

57. A letter of claim, while not compulsory, is normally sent. A failure to do so is likely to have cost implications. The letter of claim is usually substantial containing sufficiently concise details of the patent and the infringement.

58. Historically attempts to obtain discovery in Germany were not successful. However in Faxkarte44 the Federal Supreme Court concluded that the law must enable a copyright holder to preserve and demonstrate evidence of possible copyright infringement by suitable procedural measures and that consequently some form of discovery must be made available. The principle, though arising in a copyright case, was extended to other intellectual property cases. The position has been supplemented by Section 140c of the German Patent Act introduced in July 2008 transposing the Enforcement Directive into German Law. If a patentee is in a position to show a sufficient probability that his patent is infringed he may seek production of documents and the inspection of the object in dispute before filing a complaint. The availability of the relief is subject to some important restrictions.

Injunctions under the French patent law system

59. French patent law provides for a preliminary injunction under Article L.615-3 of the IP Code as amended by the law of 29^th October 2007: a patent owner may initiate a summary proceeding and obtain a court order to prevent any impending infringement or the continuation of infringing actions. Usually an infringement suit is launched after a successful saisie contrefaçon. Two conditions must be met in order to obtain a preliminary injunction. The first is that the main proceedings must appear well founded. This requires prima facie that the patent appears to be valid and infringed. Validity is normally assumed unless (for example) the search report mentions any relevant prior art. Infringement is assumed when a saisie contrefaçon has shown that the features claimed by the patent have been reproduced. Frequently the action will be preceded by a successful saisie contrefaçon.

60. The saisie contrefaçon is codified in Article L.615-5. It is a special means of obtaining evidence available to the IP owner and works in his favour. The provision stipulates that any party that is entitled to initiate a lawsuit due to counterfeit goods may obtain a court decision authorising it to send the bailiff to the defendant's premises. The bailiff can seize the goods and also devices and instruments that contributed to the production or distribution of the infringing goods. The saisie contrefaçon could be defined as a preliminary measure prior to an infringement action which requires the strict observance of some rules contained either in patent or civil procedural law or elaborated by the case law. It does not require the IP owner to show a good case. The time limit for a patent owner to initiate an action on the merits is 20 working days and if an action is not initiated then the defendant is entitled to compensatory damages.

61. The second condition is that the main proceedings must have been instituted within the short time once the patentee becomes aware of the likely infringement and the infringer. Case law suggests no later than six or seven months.

Conclusion

62. Undoubtedly the tests for granting interlocutory relief are influenced by other aspects of the relevant legal system and the nature of the trial and the timeline for any trial. It is noteworthy however that there are significant differences in approach within the Common Law System and in particular with regard to the threshold requirement relating to the strength of a party's case. It is clear however that the availability of fast and comprehensive injunctive relief plays a very significant role in both the Two Systems in the protection of intellectual property rights. The complexity of modern technology makes it essential that ancillary relief in the form of orders for obtaining evidence to assist in the establishment of infringements are available in order to ensure comprehensive patent protection.