Legal Updates

Intellectual Property: Patent Infringement - Refusal to Grant Interim Injunction

In the recent case of Mayne Pharma (USA) Inc and others v Teva UK Ltd and another [2004], the claimants brought an interim injunction against Teva UK Limited ('the defendants') for patent infringement. The courts held that the claimants had failed to establish that there was a real risk of damage which justified immediate intervention by the court and refused them an interim injunction.

By way of background, there were three claimants in this action. The first claimant was the proprietor of a patent relating to the formulation of stable 'injectable paclitaxel composition' - a pharmaceutical product used in the treatment of cancer. This formulation incorporated the use of an acid to enhance the shelf life of the product. The second claimant was the United Kingdom subsidiary of the first claimant and the third claimant was the Australian parent company.

The claimants applied without notice for an interim injunction for patent infringement having found out that the defendants were intending to launch a 'paclitaxel' product in the UK and believing that the defendants' formulation would infringe the first claimant's patent. The defendants attended the hearing. The application was dismissed.

The courts ruled that on a without notice application for an interim injunction where there was to be an early effective hearing of the application, there had to be an element of threatened damage which required immediate intervention by the court. The courts held that in considering the claimants application, the court would have regard only to the apprehension of damage from the date of the application to the date of the effective hearing.

Comments: The courts will grant an interim injunction if a claimant can show that on the balance of convenience that (i) the claimant has a serious issue to be tried and had made out a prima facie case (ii) that if the case went to trial damages would not fully compensate the claimant; and (iii) the merits of the case were strong. The court will not grant an interim injunction, if damages to be awarded at the trial would adequately compensate the claimant and the defendant would be able to pay.

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© RT COOPERS, 2005. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.