Both/or – should the patentee selected between a PI or a essential motion in Denmark?

In a latest choice, the appellate court docket upheld a ruling whereby the patentee had forfeited the chance to acquire a PI as a result of it selected to file a essential motion first – despite the fact that the primary motion had been suspended pending EPO opposition proceedings.

This choice might have farreaching penalties as it might entail {that a} patentee is pressured to file a PI motion “too quickly”, i.e., at a time when the patentee might not (but) have enough proof of the infringement because the patentee might now in any other case danger being barred from acquiring middleman reduction resulting from “formal passivity”.
A Danish court docket of regulation might solely grant a PI if the patentee proves that its authorized po-sition could also be jeopardized whether it is pressured to await the end result of a essential motion (“periculum in mora”).

Within the current case, the patentee had firstly filed a essential motion towards defendant 1 claiming, inter alia, a everlasting injunction after opposition proceedings had been filed on the EPO and on that foundation the Danish Maritime and Industrial Excessive Court docket determined to remain the motion.

The defendant didn’t outright contest infringement however said as a substitute that there “is not any proof on this case which helps the allegation that the defendant has carried out any patent-infringement exercise in Denmark, neither with re-gard to the related technical nor the geographical scope of the patent-in-suit.”

Whereas the primary motion was pending, the patentee efficiently obtained extra proof by way of US discovery and filed an software for a PI in Denmark, cit-ing, inter alia, the necessity to acquire interim reduction whereas the primary motion was pending. The PI software was filed 15 months after the primary motion had been filed and 6 months after it had been stayed, however just a few weeks after the brand new proof from US discovery had been made out there for submitting in Denmark.

The Danish Maritime and Industrial Excessive Court docket turned down the patentee’s PI software discovering formal passivity – i.e., no periculum in mora. The court docket held that the disputed actions on the heart of the primary motion had been primarily these cited within the PI software. The court docket deemed that the patentee might have filed the PI software on the time it filed the primary motion, i.e., 15 months earlier.

The court docket dismissed the patentee’s argumentation that decisive proof of patent infringement in Denmark was solely obtained after submitting the primary motion (from the US discovery) and that, furthermore, the infringing actions in Denmark of defendant 2 (an affiliate firm of defendant 1) had solely come to mild by way of the US discovery.

In its causes for upholding the choice, the appellate court docket remarked that on the time the patentee filed the primary motion, it had argued that the proof filed confirmed that defendant 1 infringed and so there ought to be no want – within the view of the appellate court docket – to await paperwork from the US discovery proceedings.
The appellate court docket failed to deal with the truth that the infringing actions of de-fendant 2 had solely come to mild by way of US discovery and out there for submitting three weeks earlier than the PI software was filed.

BUGGE VALENTIN’s feedback:

With these choices the Maritime & Industrial Court docket and the appellate court docket appear to have adopted a considerably strict interpretation of the steadiness of when a patentee suspects infringement and when the patentee has enough proof of infringement to file a PI motion.

Each situations emphasised that the patentee will need to have been of the opinion (when the primary motion was filed) that it had enough proof to show in-fringement. This recommend that the courts assess the criterion (of formal passivity) considerably formalistically with out due consideration of the numerous practicalities essential to organize and provoke authorized motion (together with, on this case, the truth that the disputed product was not freely out there to buy).

One other attention-grabbing level is that within the preparatory works to the Danish guidelines on preliminary injunction, it’s said that the criterion relating to that the flexibility of the celebration to implement his proper will probably be misplaced if the celebration has to await a full trial, is often fulfilled in circumstances relating to infringement of IPR, i.e., it’s important of IPR holders to cease infringements.

Nonetheless, neither the Maritime and Industrial Excessive Court docket nor the Excessive Court docket (Japanese Division) appears to have included this of their evaluation, and we think of that the primary case was stayed, thus rendering the patent proprietor with out, primarily, any choices to cease the al-leged infringing actions.

The choices present that formal passivity might be invoked as a defence in preliminary injunction proceedings, even when the PI software is predicated on new proof. The courts have made it clear that what’s essential shouldn’t be the novelty of the proof, however whether or not the appliance for a preliminary injunction is said to allega-tions/claims of infringements invoked beforehand.

Consequently, we imagine that patent proprietors should take into account rigorously that once they allege patent infringement, the clock begins ticking.

Reported by Patris Hajrizaj

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