Facts
Decision
Comment


The case discussed in this article examines the conditions under which a preliminary injunction can be granted ex parte.(1) While the Patent and Market Court of Appeal ultimately found that those conditions were not met in the case at hand, the ruling poses interesting questions on the traditionally restrictive Swedish view on ex parte preliminary relief in patent cases.

Facts

A pharmaceutical company initiated infringement proceedings against a generics company under a newly granted European patent and requested that a preliminary injunction be granted against the defendant. The defendant's generic product had been selected as the product of the period for the month starting approximately two weeks after the opening of the proceedings. The claimant submitted that the matter was urgent but did not initially request an injunction ex parte. The claimant instead proposed that a 14-day deadline be fixed for the defence.

The Patent and Market Court set the deadline to 14 days from service of the summons. At the time of the summons application, the patent had yet to be validated in Sweden. However, validation was completed two days thereafter. A few days after the summons was issued, and before the defendant had taken service thereof, the claimant requested that the preliminary injunction should be granted ex parte. The defendant acknowledged receipt of the summons nine days after it was issued. On the same day, the Court granted a preliminary injunction ex parte. The defendant appealed.

Decision

The Patent and Market Court of Appeal began by discussing the legal prerequisite under section 57b of the Patents Act for granting a preliminary injunction ex parte. That requirement is that a delay is prejudicial. The Court noted that the rule was considered to satisfy Sweden's obligations under article 9(4) of the EU Enforcement Directive(2) to provide means for preliminary relief ex parte, especially where a delay would cause the claimant irreparable harm.

The Court then discussed a Supreme Court precedent on interim attachment, which entailed that such relief could be granted ex parte where there is a significant risk of sabotage and whereby the degree of urgency is of fundamental importance. The Court held that precedent to be relevant also for preliminary injunctions under the Patents Act but added that the EU Enforcement Directive meant that whether a delay would cause the claimant irreparable harm was particularly relevant.

Turning then to the case before it, the Court focused on the fact that the claimant had not requested the preliminary injunction on an ex parte basis in the summons application. The Court noted that the claimant had been aware at that time that:

  • the defendant had the generic product in its possession;
  • it was actively preparing its launch; and
  • the product had been chosen as the product of the period for the following month.

The Court then considered the circumstances cited by the claimant when it requested that the preliminary injunction be granted ex parte. These were mainly, according to the Court:

  • that the patent had been validated;
  • that the defendant had taken significant time to accept service of the summons;
  • that some further administrative steps to enable launch had been taken; and
  • certain circumstances relating to the defendant's person.

Weighing the circumstances before it, the Court held that there had not been sufficient grounds to grant the preliminary injunction ex parte.

Comment

The case shows that a party's conduct in the proceedings may be given evidentiary importance. The Patent and Market Court of Appeal seems to have treated the fact that the preliminary injunction was not requested ex parte at least upon the validation of the patent as more or less conclusive for its decision. With regard to the lack of possibilities to request a preliminary injunction before the validation of the patent, it is unlikely that it would have made any difference if the request had been made already in the application of summons. The window of opportunity is therefore quite narrow and the lesson learned is that the request of ex parte proceedings must be raised upon the date of validation of the patent to be considered by the court. In fact, the Court's reference to the claimant's position at the time of the summons application implies that the Court considered that the claimant had accepted the considerable objective risk for harm caused by the generic drug entering the market and being chosen product of the period.

It is interesting to consider what the outcome of the appeal would have been if the claimant had requested an ex parte preliminary injunction in the summons application. Such a request would not be possible to grant until the patent had been validated (for further details, see "Court rules on admissibility of infringement proceedings against patent that has not yet been granted"). Another option would have been to request the Court to try the request ex parte immediately upon validation. Notably, the ruling is silent on the meaning of "irreparable harm" in the context of generic market entry. It remains to be seen whether the circumstances highlighted by the claimant could have motivated an injunction ex parte if the request had been made at the time of validation of the patent.

For further information on this topic please contact Björn Rundblom Andersson or Wendela Hårdemark at Westerberg & Partners Advokatbyrå Ab by telephone (+46 8 5784 03 00) or email ([email protected] or [email protected]). The Westerberg & Partners Advokatbyrå Ab website can be accessed at www.westerberg.com.

Endnotes

(1) PMÖ 9563-22.

(2) 2004/48.