Provisional measures: obtaining or resisting an injunction

The fastest weapon in litigation. Article L. 615-3 IPC allows any person with standing to obtain, in summary proceedings or on an ex parte application, any measure intended to prevent or stop an imminent or established infringement: a provisional injunction under penalty, seizure of the products, the provision of security. The judge rules on the likelihood of infringement, which places the validity of the patent and the demonstration of infringement at the centre of the argument, on a tight timetable. Where the measures are ordered before any action on the merits, the applicant must bring the main action within the prescribed period, failing which the order lapses (art. R. 615-1 IPC).

Before the UPC

The provisional measures under article 62 UPCA (injunction, seizure, freezing of assets) follow their own framework: assessment of validity, urgency, proportionality and the balance of interests, with a pan-European dimension that raises the stakes, since an injunction may cover most of the European market. Preparing a provisional measures file UPC, for applicant and defendant alike (protective letters included), is a specific exercise and one we command.

On both sides of the bar

Obtaining an injunction means knowing what causes one to fail. Resisting one means knowing what causes one to succeed. We argue these proceedings in both directions and always take in their industrial side: stocks, delivery commitments, crisis communications, security to be provisioned.

What the court checks

Three questions decide the fate of an application for provisional measures. The likelihood of infringement, which presupposes a reading of the claims and a technical comparison that are already solid at the urgent stage. The likelihood that the title is valid, which the defendant will attack at once with the closest prior art. And finally proportionality, where the age of the disputed activity, the claimant's diligence and the economic consequences of an injunction for each party all weigh. A claimant who has let months pass before acting undermines its own urgency.

The price of success: security

A provisional injunction is often granted against the provision of security intended to compensate the defendant should the infringement action later be held unfounded or the measures set aside (art. L. 615-3 of the Intellectual Property Code). The Agreement on the Unified Patent Court provides an equivalent mechanism. That deposit has to be quantified and provided for before the hearing, not afterwards. Symmetrically, a defendant who obtains the lifting of the measures may claim compensation for the loss caused by an unjustified injunction.

The protective letter

Before the Unified Patent Court, a company that fears an injunction granted without being heard may lodge a protective letter with the Registry. It sets out in advance the grounds of invalidity and non-infringement, remains confidential and is communicated to the division only if an application for provisional measures is actually filed against its author. It is valid for six months, renewable. Well drafted, it turns a one-sided procedure into an inter partes debate. Badly drafted, it hands over the defence before the trial.

French summary proceedings in practice

The judge hearing urgent applications at the Paris Judicial Court sets short deadlines and a timetable for submissions fixed at the first case management hearing. A saisie-contrefaçon carried out beforehand supplies the evidential material, but its own deadline for bringing proceedings on the merits runs in parallel: the two procedures are coordinated from day one, on pain of losing the evidence while winning the urgency.

An injunction to obtain (or to resist) urgently? Contact us, +33 1 71 60 61 46.