Application for a preliminary injunction

Definition : Application for a preliminary injunction

A preliminary injunction in patent matters is the application by which a patent proprietor, or an entitled licensee, obtains from the court, before any judgment on the merits, an order prohibiting the alleged infringer from continuing or commencing the acts complained of. In France, it rests on Article L. 615-3 of the Intellectual Property Code and is sought in summary proceedings (référé) or on an ex parte application before the Paris judicial court. Before the Unified Patent Court, it takes the form of an application for provisional measures under Article 62 of the Agreement. In both systems, it is won on the likelihood of infringement, the apparent strength of the patent and the diligence of the applicant.

Why the concept matters

An infringement trial lasts years. A product launch is decided in weeks. The preliminary injunction is the instrument that aligns judicial time with commercial time: it stops a generic at the expiry of an exclusivity, closes a market to a competitor before a trade fair or a tender, and immediately changes the balance of power in a licensing negotiation. Conversely, an injunction obtained on a patent later revoked exposes the applicant to compensating the harm caused. The measure therefore cuts both ways, and its preparation, on either side, begins well before the court is seised.

The conditions under French law

Article L. 615-3 opens the action to any person with standing to sue for infringement. The court may order the measures sought only if the evidence reasonably available to the applicant makes it likely that its rights are being infringed or that such infringement is imminent. The provision does not require urgency in the sense of ordinary summary proceedings, but the applicant’s slowness weighs on the assessment of likelihood and proportionality. The defendant usually pleads the likely invalidity of the patent and the absence of infringement. The court assesses both without deciding the merits, asking whether the challenge is serious.

The available measures are broad: an injunction backed by a periodic penalty, seizure or delivery up of the products suspected of infringement, security to be provided by the defendant, and an interim award of damages where the existence of harm is not seriously disputable. The court may make the measures conditional on the applicant providing security to compensate the defendant if the action on the merits is later held unfounded. Where circumstances require that measures be taken without hearing the defendant, in particular where any delay would cause irreparable harm, the application may be made ex parte.

The measures ordered are set aside, at the defendant’s request, if the applicant has not brought proceedings on the merits within the period fixed by regulation, namely twenty working days or thirty-one calendar days, whichever is longer, without prejudice to damages.

Before the Unified Patent Court

Article 62 of the Agreement allows the Court to grant injunctions intended to prevent any imminent infringement or to prohibit the continuation of the alleged infringement, subject where appropriate to a periodic penalty, as well as the seizure or delivery up of the products. The Court has discretion to weigh up the interests of the parties and to take into account the potential harm for either of them resulting from the granting or the refusal of the injunction. The applicant must provide evidence satisfying the Court with a sufficient degree of certainty that it is the right holder, that the patent is valid and that it is being infringed. The Court of Appeal held in NanoString v 10x Genomics that the applicant must persuade the Court that it is more likely than not that the patent is valid and infringed, and that urgency is assessed in light of the applicant’s diligence since it became aware of the infringement.

The procedure is governed by Rules 206 to 213 of the Rules of Procedure. The application may be examined without hearing the defendant where urgency so requires or where a hearing would jeopardise the enforcement of the measure. The defendant may protect itself by lodging a protective letter in advance, which the judge will take into account. The order may be made conditional on security, and the applicant must start proceedings on the merits within thirty-one calendar days or twenty working days, whichever is longer, failing which the measure is revoked. A defendant wrongly enjoined obtains compensation if the measure is revoked or if the patent is subsequently revoked.

Useful distinctions

The preliminary injunction differs from the permanent injunction, granted by the judgment on the merits, and from the saisie-contrefaçon, which serves to establish evidence rather than to stop the infringement, even though the two are often combined. In France, the référé is the ordinary route for the action. The ex parte application is the exceptional route, reserved for cases where an adversarial hearing would defeat the measure. Before the Unified Patent Court, the preliminary injunction coexists with the order to preserve evidence and with the accelerated action on the merits, which the Court aims to decide within about a year.

Key takeaways

Three factors decide the outcome: the quality of the evidence of infringement, the apparent strength of the patent against the prior art relied upon, and the speed with which the applicant acted. For the proprietor, preparation means gathering the evidence before issuing proceedings, choosing between Paris and the Unified Patent Court according to the size of the market to be protected, and measuring the financial risk of an injunction on a contested title. For the defendant, it means preparing the validity challenge, considering a protective letter before the Court and documenting the harm an injunction would cause it.

Sources

This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats litigates patent disputes before the Paris Judicial Court, the Paris Court of Appeal and the Unified Patent Court. Where the question arises in a real case, the useful moment is almost always before proceedings are issued.

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