Preliminary injunctions and patent applications: the French fault line

A published patent application confers provisional protection. Is that enough to obtain a preliminary injunction? The Paris summary proceedings judge said yes in 2022, the Paris Court of Appeal said no in 2023. The answer governs the window of action of the proprietor as much as that of the competitor, and it is usually played out at the moment a generic is launched.

What the summary proceedings judge had accepted

Two orders of the tribunal judiciaire de Paris, of 3 June 2022 and 4 August 2022, were made in the fingolimod litigation. The claimant based its provisional measures on a European demande de brevet designating France that had not yet been granted. The judge dismissed the objections to admissibility: the word title, in Article L. 615-3 of the French Intellectual Property Code, denotes the basis of the infringement action, that is either the duly published application or the European patent once it has been granted.

The two orders nevertheless refused theinjunction, pointing to a serious argument capable of calling into question the apparent validity of the application. The applicant therefore had standing without obtaining the measure. That dissociation went unnoticed, although it says what matters: summary relief was not barred in principle, it was lost on the ground of the serious argument.

Why the Court of Appeal closed the route

The Paris Court of Appeal took the opposite view. By a judgment of 22 November 2023 it held inadmissible applications for provisional measures based on mere patent applications. On a combined reading of Articles L. 615-3, L. 613-1 and L. 615-4 of the Intellectual Property Code, it drew a distinction: the law grants the holder of an application the right to bring proceedings on the merits for Infrigement, subject to the court staying those proceedings until grant, but it does not provide for summary proceedings. Article L. 611-2 lists the industrial property titles protecting inventions, and the application is not among them. The same position had already been taken, in the fingolimod case, by a judgment of 22 March 2023.

The real debate: does the right arise on filing or on grant?

The literal argument is solid without being decisive. Article L. 615-3 opens the measure to anyone having standing to bring an infringement action, and the holder of a published application has that standing. The stay provided for by Article L. 615-4 concerns only the proceedings on the merits, whereas summary proceedings cannot be stayed. Excluding the application from the scope of Article L. 615-3 therefore does not delay protection, it removes it throughout the period in which the competitor settles on the market.

The counter-argument deserves to be heard: until grant, the scope of the claims may still change, and neitheropposition norrévocation action is available. But that uncertainty belongs to the assessment of the serious argument, as the two orders of 2022 showed, and not to an objection to admissibility. Article 67 of the European Patent Convention, which confers on the published application the protection of Article 64, points the same way, and the practice of theEPO does not stand in the way.

What it changes for generic companies and originators

For the proprietor, the window before grant is no longer won by an injunction, it is prepared: accelerating the procedure before the Office, bringing proceedings on the merits with the stay accepted, building the evidence through a saisie-contrefaçon and quantifying the loss. Provisional protection keeps its value, since the acts performed before grant remain compensable afterwards.

For the competitor, inadmissibility is an advantage of timing and not an immunity. Launching before grant removes the risk of an injunction, not the damages risk, nor that of an injunction ordered immediately after grant. The natural ground for that trade-off is generic medicines , where a few weeks of market share weigh more than the debate of principle.

The contrast with the UPC

The Agreement on a Unified Patent Court adopts a different architecture. Its Article 3(d) brings pending European patent applications within its scope of application, and its Article 32(1)(f) gives the Court competence over actions for damages or compensation derived from the provisional protection conferred by a published application. The European text therefore treats the published application as a position that can be defended, where the French reading denies it access to provisional relief. For a portfolio still in prosecution, the choice of forum is not neutral, and the question arises before the generic launch rather than after.

Decisions in the sector are tracked one by one in Pharma Litigation Watch. Our firm litigates these disputes before the French courts and before the UPC, in particular as correspondent in France for patents and the UPC. Contact us.

This article is an updated adaptation of two analyses by Matthieu Dhenne originally published on Kluwer Patent Blog, on 28 June 2022 (A preliminary injunction can be based on a patent application) and on 19 December 2023 (FINGOLIMOD or the Blues of Hesitation: can preliminary injunctions be based on a patent application under French law?). Official sources: tribunal judiciaire de Paris, 3 June 2022, RG no. 22/52718 ; tribunal judiciaire de Paris, 4 August 2022, RG no. 22/54655 ; Paris Court of Appeal, 22 November 2023, PIBD 1218-III-1.