Jurisdiction to order Interim Injunctions before a Patent is granted - Novartis v Teva
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| Author Amir.ahrls Licence CCO 1.0 Source Wikimedia Commons |
Patents Court (Mr Justice Roth) Novartis AF and another v Reva UK Ltd and others [2022] WLR(D) 306, [2022] EWHC 959 (Ch)
Can an applicant for a patent or other intellectual property right seek an interim injunction to restrain an act that would infringe such right in the interval between the removal of the last objection to the granting of the right and the date of grant? The right to damages for infringing acts is backdated to the publication of the application by s.69 (1) of the Patents Act 1977 but s.69 (2) (a) entitles an applicant to bring proceedings by virtue of this section in respect of any act only after the patent has been granted. S.9 (3) (a) of the Trade Marks Act 1949 provides that no infringement proceedings may be begun before the date on which the trade mark is in fact registered. S.7A (6) of the Registered Designs Act 1949 makes clear that no proceedings shall be taken in respect of an infringement of the right in a registered design committed before the date on which the certificate of registration of the design under this Act is granted.
This appears to have been the first time the issue has arisen for Mr Justice Roth remarked at para [16] of his judgment in Novartis AG and another r v Teva UK Ltd and others [2022] WLR(D) 306, [2022] EWHC 959 (Ch) that none of the experienced counsel appearing on this application could point to any authority which addresses that question. The circumstances in which the issue arose were unusual. Novartis AG and its British subsidiary applied for an injunction to restrain the defendants from marketing and distributing a generic version of fingolimod which the claimants supplied under the trade mark Gilenya. The claimants relied upon European patent application EP 2 959 894 which had been cleared for grant by the Technical Board of Appeal of the European Patent Office. (see T 0108/21 (Treatment of multiple sclerosis/NOVARTIS) of 8.2.2022). The only problem was that it would take several months for the patent to be granted. The Technical Board of Appeal had to publish its judgment and the Examination Division needed to complete its formalities. During that time the defendants would have entered the market with their generic fingolimod.
Relying on the Privy Council's decision in Broad Idea International Ltd v Convoy Collateral Ltd [2022] 1 All ER 289, [2022] 1 All ER (Comm) 633, [2022] 2 WLR 703, [2021] UKPC 24, the Novartis companies argued that the court's power to grant an injunction under s.37 of the Senior Courts Act 1981 is limited only by statute. That was not disputed by the defendants but they contended that s.69 (2) imposed such a statutory limitation. In their submission, the law was clear. Before a patent is granted, the applicant has only a putative right to damages. He or she can recover those damages if and only if the patent is granted. No action for those damages can be launched until after grant.
Mr Justice Roth was not persuaded by the defendants' argument. He observed at para [25] that "a remedy in damages, which is of course final, is very different from relief by way of interim injunction, which by its nature is temporary and provisional, and supported by a cross-undertaking in damages to protect the defendant." He could "see no inconsistency as a matter of principle in the court having power, when appropriate, to prevent a defendant from doing something which, if it were done, might subsequently give the victim of those acts the right to claim damages for the resulting loss, just because there is a bar on seeking those damages until a later stage."
In his lordship's view, the restriction on recovery of damages under s.69 (2) of the Patents Act 1977 was analogous to the limitation period. Referring to Lord Mackay LC's speech in Sevcon Ltd v Lucas CAV Ltd [1986] RPC 609 that a claim for damages that was statute barred would not fail for not disclosing a cause of action but might be struck out as an abuse of process, he said at [37]:
He, therefore, concluded that s. 69 of the Patents Act 1977 was not to be interpreted as a statutory bar on the jurisdiction of the court to grant interim relief under s. 37 of the Senior Courts Act 1981. The question of whether an injunction should be granted was to be determined in accordance with Lord Diplock's test in American Cyanamid Co v Ethicon Ltd [[1977] FSR 593, [1975] UKHL 1, [1975] 1 All ER 504, [1975] 2 WLR 316, [1975] AC 396. The defendants conceded that there was a serious issue to be tried notwithstanding their contention that the patent in suit was very weak and was likely to be revoked. However, the learned judge found on the evidence before him that damages would be an adequate remedy for the claimants. That was enough to dispose of the case but he considered whether damages under the claimants' cross-undertaking would be an adequate remedy for the defendants were an injunction to be granted. He concluded at [74] that damages for the defendants, considered individually or even collectively, would be hard to quantify on an adequate basis. He held at [81] that:
"(a) the Court has jurisdiction to grant an interim injunction although the patent has not yet been granted to Novartis; but
(b) in all the circumstances, Novartis' application for interim relief is refused."
It appears from paragraph [3] of a further judgment by Lord Justice Birss in Novartis AG and another v Teva UK Ltd and others [2022] EWCA Civ 775 that Mr Justice Roth refused permission to appeal but in the meantime he granted a brief injunction to hold the ring while the patentee sought permission from the Court of Appeal. Novartis sought permission to appeal on 6 grounds which the learned Lord Justice considered at a hearing on 25 May 2022. His lordship considered all those grounds and held that there was no prospect of success. He, therefore, refused permission to appeal and discharged the injunction.
This is clearly an important judgment. It raises the question of whether it opens the door to other interim injunction applications before a patent or other intellectual property right has been granted. Mr Justice Roth thought not. He said at para [39] of his judgment:
"The circumstances of the present case are exceptional as regards the certainty both that a patent will be granted and as to its scope. I consider that the Patents Court will be wary of an attempt to seek interim relief prior to grant of a patent on the basis that such a grant is very likely. The Court can be expected to take account of the legislative policy underlying s. 69 PA that a remedy should not be given until the scope of the claimant's patent has been determined. Floodgates arguments are often raised by parties seeking to resist a legal development, but once the argument is rejected the predicted flood generally fails to materialise. I note that a similar floodgates argument was rejected by the Court of Appeal in the challenge to the jurisdiction to grant Arrow declarations: Fujifilm at [95]."
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