In the beginning of April, the Finnish Market Court ruled for the first time that a preliminary injunction cannot be granted on the basis of a pending patent application in Finland – not even in the case where the European patent office (“EPO”) has already deemed the application admissible but has not yet formally granted a patent on the basis of it.
The Market Court’s ruling stems from preliminary injunction proceedings between pharmaceutical manufacturers. The applicant, an originator company, applied for preliminary injunctions against the respondents to enjoin the respondents from marketing and selling their generic products on the Finnish market based on a European patent application.
Under Chapter 7 Section 3 of the Finnish Code of Judicial Procedure (Oikeudenkäymiskaari), the first prerequisite for granting a preliminary injunction is that the applicant can demonstrate that it is probable that they have a right that is enforceable against the opposing party (the so-called ‘prerequisite of claim’).
The applicant claimed that although the patent application had not been granted, it enjoyed the so-called provisional protection under Section 70 n (2) of the Finnish Patents Act, which is based on Article 67 of the European Patent Convention. According to the applicant, effective provisional protection requires that a patent application already establishes a right of prohibition and a competent court may therefore order a preliminary injunction on the basis of such application if the grant of a patent on the basis of it is likely.
The respondents argued that the provisional protection under the Patents Act means only that the applicant is entitled to retroactively seek compensation for the exploitation of the invention during the application period, but only after the application has led to the grant of a patent. The respondents furthermore argued that the provisional protection does not establish a right of prohibition that can be enforced against the respondents with a preliminary injunction.
Market Court’s ruling
The Market Court accepted the respondents’ position and refused to grant a preliminary injunction. The Court noted that one of the requirements for obtaining provisional protection under the Patents Act is that the application leads to the grant of a patent in Finland.
Consequently, the Market Court ruled that provisional protection must be interpreted as not establishing enforceable rights before the European patent has been formally granted. On that basis, the Market Court ruled that the applicant had not demonstrated that it was probable that they had a right that was enforceable against the respondents, i.e., the ‘prerequisite of claim’ was not met.
The Market Court’s rulings are final.
The Market Court’s rulings have significant precedential value as they confirm for the first time that a patent application cannot serve as the basis for a preliminary injunction. This assessment is also not affected by whether the application has been deemed admissible in oral proceedings before the EPO if it has not been granted and validated in Finland.
Given that the prerequisites for granting a preliminary injunction in intellectual property cases are similar irrespective of the nature of the intellectual property right, this has also more general applicability in the field of intellectual property law. The rulings essentially confirm that preliminary injunctions cannot be granted on the basis of applications for exclusive rights.
We are happy to provide more information on this ruling and its significance for your business.