Posted: May 26th, 2009
No preliminary injunction available if the patent protection is only provisional.
The Metropolitan Appeal Court in Budapest confirmed the first instance ruling of the Metropolitan Court in which it rejected the request for a preliminary injunction that was submitted by a French pharmaceutical manufacturer against a major Hungarian competitor based on a pharmaceutical product patent that was still under provisional protection.
Read an English translation of the first instance judgment here. Original judgment follows later.
Read an English translation of the appeal judgment here. Original judgment follows later.
The Hungarian national patent – having an application date of 2000 – was published in 2002, which created provisional patent protection, however it had not been yet granted by the Hungarian Patent Office.
Still without having the patent granted, in the 3rd quarter of 2008 the patentee submitted a request for preliminary injunction for the prohibition of a generic competitor’s product that appeared on the Hungarian market in September 2008.
The Metropolitan Court rejected the request arguing the absence of a substantive right (i.e. the absence of a granted patent) to be protected by the requested injunction. The decision was appealed by the Applicant, however it was maintained by the Court of Appeal, Budapest.
The Appeal Court declared that no infringement of a patent right can be rendered sufficiently probable in a preliminary injunction proceeding if the patent is not granted, i.e. if it is only under provisional protection. It was emphasized that the scope of the claims may still change in front of the patent office, therefore it is all the more uncertain whether a product infringes the future patent or not. With respect to this it is not to be considered how long the registration of the process has been pending.
In its approved first instance decision, the Metropolitan Appeal Court further established that an invention enjoys legal protection to some extent even prior to the filing of the patent application (personal rights, trade secrets). The act of filing a patent application adds nothing more to this situation than the right to the priority date and to exclude third persons from acquiring the same right. Against unauthorized exploitation the applicant may start an infringement proceeding after the date of publication of the patent application, but his claims can only be enforced after the date of the granting of the patent (i.e. proceeding shall be suspended until the granting of the patent).
The Metropolitan Court highlighted that although the Patent Act does not explicitly exclude the availability of preliminary injunction based on provisional protection, but it is also never explicitly allowed in the Patent Act. The Metropolitan Court concluded that the availability of preliminary injunction based on provisional protection was intentionally left out from the Patent Act with respect to the uncertain scope of protection. The court finally concluded that the granting of the patent is a preliminary question related to the availability of the preliminary injunction.