No interim injunction before the patent is granted

Setterwalls has recently successfully represented a pharmaceutical company in defending itself against a claim for an interim injunction based on a patent application. After several tours in the courts, the Patent and Market Court rejected the opposing party’s claims and clarified that an interim injunction requires that a patent has been granted.

The patent applicant filed a lawsuit in April 2022, presenting, among other things, several alternative claims for an interim injunction under penalty of a fine for alleged infringement of a patent application regarding a dosing regimen for an MS drug.  The Board of Appeal of the EPO had decided that a patent should be granted with certain claim wording, but the patent had not yet been issued by the EPO or validated in Sweden at the time of the action. The patent applicant argued that, in this situation, it should be possible to issue an interim injunction and made alternative claims for such an injunction to be imposed with immediate effect or at least with effect from the grant of the patent.

The Patent and Market Court (PMC) dismissed the patent applicant’s action and did not issue a subpoena. According to the PMC, there was no legal basis for bringing an infringement action before the patent had been granted. In addition, according to the PMC, it appeared difficult and inappropriate to allow patent applicants to bring infringement actions based on a patent application.

The patent applicant appealed the PMC’s rejection decision to the Patent and Market Court of Appeal (PMCA), which in a decision issued in May 2022 overturned the PMC’s decision and referred the case back to the PMC. According to the PMCA, it appeared likely that the patent would be granted before the final decision of the case. Thus, there were conditions for starting a meaningful preparation of the case, so the action should not be dismissed. The PMCA did not take a position on the patent applicant’s interim injunction claims but referred the case back to the PMC for further proceedings.

The PMC subsequently issued a subpoena and ordered Setterwalls’ client to file a defense. Setterwalls’ client filed a defense challenging the patent applicant’s claims and arguing that interim injunctions may not be issued before the patent is granted. At the same time, the client brought an action for revocation of the patent not yet granted, arguing that such an action must be allowed in the event that the infringement action is allowed. The PMC shared this assessment and issued the subpoena in the invalidity case.

After some correspondence between the parties in both the infringement and invalidity cases, the PMC decided on August 23, 2022, to reject all of the patent applicant’s interim injunction claims. The PMC noted that at the time of the decision, no patent had yet been granted. Furthermore, the PMC noted that the provisional protection under Section 88 of the Patent Act can only be claimed retroactively, after the patent has been granted. The PMC also noted that an interim injunction could not be based on Chapter 15, Section 3 of the Code of Civil Procedure, since the patent applicant could not have a claim against the defendant as there was not yet a patent on which such a claim could be based.

The outcome was not unexpected, especially after a number of courts in different European countries reached similar conclusions in parallel proceedings concerning the same patent application. It remains to be seen whether the patent applicant appeals the decision to the PMCA or whether the patent applicant makes new interim injuction claims if and when the patent has been granted.

We believe that the PMC’s decision is well considered and contributes to creating legal certainty in this area. The opposite outcome would have risked creating uncertainty as to which patent applications can be used as a basis for interim measures and how early in the patent application process such measures may be initiated. We believe that such practices would have benefited neither rights holders nor alleged infringers.

(See PMC’s decision of 23 August 2022 in Case No PMT 7797-22)