(No) injunctive relief before the actual grant of a patent, GRUR 23/2023

Following expiry of market exclusivity in March 2022 for the drug Gilenya® (active ingredient: fingolimod) used for the treatment of multiple sclerosis and an unexpected delay in the grant of the dosage patent on a second medical use following complaint proceedings, several manufacturers took the opportunity to launch equivalent generics on the market. The originator then applied to the Düsseldorf Regional Court for injunctive relief on the basis of the patent application that had not yet been granted, arguing that grant of the patent was imminent and was only a mere formality. The Düsseldorf Regional Court rejected the application, which had been based on Sections 826, 1004 of the German Civil Code (BGB) and unfair competition claims, ruling that Art. II 1 para. 1 Act on International Patent Conventions in conjunction with Section 33 Patent Act (PatG) only provides for a claim for compensation for patent applications that have not yet been granted and that no irreparable damage had occurred over and above pecuniary damage that would justify an exception being made. Courts in other European countries to which the originator appealed made similar findings.
The article by Dr. Marco Stief analyses the various national legal proceedings and discusses the arguments put forward and the circumstances under which injunctive relief under a patent application might exceptionally be justified.