A recent Court of Appeal decision has confirmed that an interim injunction can be granted even when patents have been found invalid at first instance pending appeal (Novartis AG v Hospira UK Limited [2013] EWCA Civ 583).

Novartis is the proprietor of two European patents (“the patents”) relating to the treatment of osteoporosis, together with an earlier patent and supplementary protection certificate (“SPC”) covering zoledronic acid and in force until 15 May 2013. Hospira, a well-known generic medicine manufacturer and supplier commenced revocation proceedings against the patents in December 2011, with the intention of marketing a generic product similar to the patents. Revocation proceedings were fixed for February 2013, and in November 2012 Hospira obtained a marketing authorisation for their products. It gave an undertaking that it would not launch its product until expiry of the SPC in May 2013, and following judgment in March 2013 that the patents were invalid, it became clear that Hospira was indeed intending to launch its product in the UK following expiry of the SPC. In April 2013 Novartis commenced infringement proceedings, with an appeal in the revocation proceedings pending. An application for an interim injunction against Hospira was rejected by Birss J at the English High Court on 14 May 2013, and because of the urgency an appeal to the Court of Appeal was heard a few days later.

The Court of Appeal disagreed with Birss J’s decision at first instance and granted an injunction pending final judgment in the appeal or further order. The damage to Novartis should an injunction not be granted and Hospira’s generic product be launched was one factor in the Court’s decision, and the Court did not agree with Birss J’s distinction between granting an injunction pending trial (which Birss J agreed would have been granted) and granting an injunction pending an appeal.

When exercising its discretion in granting an interim injunction pending appeal, the court should bear in mind a number of principles, set out at paragraph 41 of the judgment and including:

  1. The court must be satisfied that the appeal has a real prospect of success;
  2. If the court is satisfied that there is a real prospect of success on appeal, it will not usually be useful to attempt to form a view as to how much stronger the prospects of appeal are, or to attempt to give weight to that view in asserting the balance of convenience; and
  3. It does not follow that an interim injunction pending appeal should be granted just because one has or would have been granted pre-trial. The court must assess all the relevant circumstances following judgment, including the period of time before any appeal is likely to be heard and the balance of hardship to each party if an injunction is refused or granted.

This is a useful decision for patent holders and highlights the Court's ability to exercise its discretion to do "justice" in granting interim protection to a party who has been unsuccessful at trial, pending an appeal, providing the party can demonstrate that its appeal has a real prospect of success. The principles are likely to have wider application and not be limited to the context of patents.

A link to the decision is here