Patents are important tools for innovation policy. They incentivize the creation and dissemination of new technical solutions and help to disclose their working to the public in exchange for limited exclusivity. Injunctions are important tools of their enforcement. Much has been written about different aspects of the patent system, but the issue of injunctions is largely neglected in the comparative legal literature. This book explains how the drafting, tailoring and enforcement of injunctions in patent law works in several leading jurisdictions: Europe, the United States, Canada, and Israel. The chapters provide in-depth explanation of how and why national judges provide for or reject flexibility and tailoring of injunctive relief. With its transatlantic and intra- European comparisons, as well as a policy and theoretical synthesis, this is the most comprehensive overview available for practicing attorneys and scholars in patent law.
Author(s): Jorge L. Contreras, Martin Husovec
Edition: 1
Publisher: Cambridge University Press
Year: 2022
Language: English
Commentary: TruePDF
Pages: 364
Tags: Intellectual Property; Comparative Law; Patent Suits; Injunctions
Cover
Half-title
Title page
Copyright information
Contents
Notes on Contributors
Preface
References
1 Introduction: Patent Remedies in the Global Landscape
References
2 Injunctive Relief in Patent Law under TRIPS
A. TRIPS and Enforcement
B. Provisions in TRIPS Specifically Relevant to Patent Injunctions
C. Application of a Discretionary Approach to Injunctive Relief
1. The Adequacy of Monetary Damages
2. National Treatment and MFN
3. Discrimination by Field of Technology
D. Conclusion
References
Cases
Regulatory and Legislative Materials
Books, Articles and Online Materials
3 European Union
A. EU Law Framework
1. Overview
2. EU Legal Framework for Patent Injunctions, in Particular Art. 11 of the Enforcement Directive
3. Basic Principles of Construction of Art. 11 of the Enforcement Directive
4. Considerations of Proportionality
5. Considerations of Fundamental Rights
6. Considerations of Public Interest
7. Competition Law Considerations
8. Injunctions against Intermediaries
9. Scope of Injunctions Regarding Non-Infringing Activities
10. Flexibility Regarding NPEs
11. Grant of Compensation in Lieu of Injunctions
B. Agreement on a Unified Patent Court (UPCA)
1. Overview and Current Status
2. Legal Framework
3. Discretion of the Court?
4. Considerations of Proportionality
5. Competition Law Considerations
6. Injunctions against Intermediaries
7. Flexibility Regarding NPEs
8. Grant of Compensation in Lieu of Injunctions
9. Consideration of Validity Concerns
10. Form of Court Order
C. Conclusion
References
Cases
Regulatory and Legislative Materials
Books, Articles and Online Materials
4 Injunctions in European Law: Judicial Reflections
References
Cases
Regulatory and Legislative Materials
5 Canada
A. Overview
1. Permanent Injunctions
2. Interlocutory Injunctions
B. Drafting and Enforcing Injunctions
1. Drafting
2. Wording
3. Enforcement
C. Alternatives and Modifications
1. Overview
2. Refusing Injunctive Relief
3. Damages in Lieu
4. Stay Pending Appeal
5. Stays Other than Pending Appeal
6. Tailored Injunction
D. Procedural Issues
1. Types of Parties
2. Effect of Validity
3. Public Interest
4. Follow-on Innovation
E. Conclusion
References
Cases
Canada
Other Jurisdictions
Regulatory and Legislative Materials
Books, Articles and Online Materials
6 Finland
A. Patent Litigation in Finland: An Overview
1. Court System
2. Types of Actions
B. The System of Injunctions in Finland
C. The Private and Public Interest
1. Proportionality
2. Public Interest
D. Procedural Issues
1. Public Bodies as Defendants
2. Public Bodies as Plaintiffs
3. Abuse of Rights
4. Unclean Hands
5. Delay in Applying for a Final or Preliminary Injunction
6. Patent Validity
E. Alternatives and Modifications
1. Limited Duration of Final and Preliminary Injunctions
2. Ongoing Royalties
3. Compulsory Licences
F. Drafting and Enforcing Injunctions
1. The Wording of Injunctions and Their Interpretation
2. Flexibilities in the Enforcement Phase
References
Cases
Court of Justice of the European Union
Supreme Court
Market Court
Helsinki Court of Appeals
USA
Regulatory and Legislative Materials
International Conventions
European Union
Finland
Books, Articles and Online Materials
7 France
A. The Requirements for Granting a Permanent Injunction for Infringement of a Patent in French Law
1. Permanent Injunctions Must Be Granted Automatically When a Valid Patent in Force Has Been Infringed
a. The Legal Basis of Permanent Injunctions
b. The Infringed Patent Must Be in Force
c. An Automatic Remedy
2. When Injunctive Relief Is Not Mandatory
a. Situations Where a Permanent Injunction May Be Denied
b. Differences between Preliminary and Permanent Injunctions
B. The Effects of Permanent Injunctions for Infringement of a Patent in French Law
1. The Scope of Permanent Injunctions
2. Duration of Permanent Injunctions
3. Remedies for Violation of Permanent Injunctions
References
Cases
Cour de cassation
Courts of Appeal
Courts of First Instance
Regulatory and Legislative Materials
Books, Articles and Online Materials
8 Germany
A. Patent Injunctions: Main Types and Requirements
1. Main Types
2. General Requirements and Specific Requirements for Preliminary Injunctions
B. Scope as Claimed and Granted: Enforcement
C. Bifurcation and Stays
1. Stay of Infringement Proceedings Pending Validity Proceedings
2. Other Types of Stays and Procedural Reactions to Patent Invalidation
D. Defences and Limitations
1. Considerations of Public Interest
a. Relevance and Types of Public Interest Considerations
b. Compulsory Licences on Public Interest Grounds
c. Expropriation Orders on Public Interest Grounds
2. Compulsory Licence According to Sec. 24(2) GPA
3. Competition Law
4. General Abuse of Rights Doctrine, Sec. 242 GCC
5. Personal Characteristics of the Patentee or Infringer
a. Infringers
b. Plaintiffs
6. Proportionality
a. Traditional Legal Framework
b. Revision of Sec. 139 GPA
7. Further Limitations
E. Alternatives to Injunctive Relief
References
Cases
Regulatory and Legislative Materials
Books, Articles and Online Materials
9 Israel
A. Injunctive Relief in Israeli Law: An Overview
1. Injunction as Equitable Relief
2. Property Rights and Tort Law Remedies
B. Injunctive Relief in Israeli Patent Law
1. The Patents Act
2. Court Decisions
a. Supreme Court
b. District Court
c. Flexibilities within the Interpretation of Substantive Law
C. Injunctive Relief in Patent Subject-Matter Cases Based on Unjust Enrichment Law
D. Analogies from Close Legal Areas: Copyright and Plant Breeders' Right Law
1. Analogies from Copyright Law
2. Analogies from the Plant Breeders' Right Law
E. Conclusions
References
Cases
Regulatory and Legislative Materials
Books, Articles and Online Materials
10 Italy
A. The Legal Context
1. Preliminary and Interim Injunctions
2. Final Injunctions
B. Requirements for the Grant of Injunctive Relief
1. Preliminary and Interim Injunctions
2. Final Injunctions
C. Content of Courts' Orders
D. Validity of Court Orders
1. Preliminary and Interim Injunctions
2. Final Injunctions
E. Conclusions
References
Cases
Regulatory and Legislative Materials
Books, Articles and Online Materials
11 Netherlands
A. Procedural Issues
1. Merits Proceedings
2. Interim Relief Proceedings
B. The Private and Public Interest
C. Alternatives and Modifications
D. Drafting and Enforcing Injunctions
E. A Look Ahead
1. The Enforcement Directive and the Proportionality Requirement
2. The CJEU's Case Law on Proportionality as Interpreted by the Dutch Supreme Court
3. Implications for Dutch Patent Law
References
Cases
Court of Justice of the European Union (CJEU)
Dutch Supreme Court (HR)
Dutch Courts of Appeals (CoA)
Dutch District Courts (DC)
Other
Books, Articles and Online Materials
12 Poland
A. Tools Allowing for Flexibility in Granting Permanent Injunctive Relief
1. Alternative Measure: Compensation in Lieu of an Injunction
2. Abuse of Rights Doctrines
3. Competition Law Defense
4. Assessment
B. Proportionality and Permanent Injunctions
1. Proportionality and Industrial Property Law Remedies before the Constitutional Court
2. Proportionality and Copyright Law Remedies before the Constitutional Court
3. Proportionality and IP Remedies before the Supreme Court
C. Enforcement of Permanent Injunctions
D. Preliminary Injunctions
1. General Picture
2. What Tilts the System in Favor of the Patentee
E. Conclusions
References
Cases
Books, Articles and Online Materials
13 United Kingdom
A. The Jurisdiction of the Courts to Grant Injunctions in Patent Cases
1. Final Injunctions
2. Interim Injunctions
3. Enforcement of Injunctions: Contempt of Court
B. Form of Court Orders in Which Injunctions Are Granted
1. Final Injunctions against Primary Infringers
2. Final Injunction against Indirect Infringer
3. Interim Injunctions
C. Denial of a Final Injunction, but Grant of Remedial Measures
D. Grant of Ongoing Royalty/Damages in Lieu of Final Injunctions
E. Partial Denial of Injunctive Relief for a Sub-Group of Infringing Acts
F. Denying Injunctive Relief against a Certain Type of Defendant as Such
1. The Crown
2. Compulsory Licensing and Licences of Right
3. Other Cases
G. Denying Injunctive Relief to a Certain Type of Plaintiff
H. Issuing Injunctions for Limited Time Periods Only
1. The Standard Rule: For the Life of the Patent
2. Post-Expiry or ''Springboard'' Injunctions
3. Conditional Injunctions: The New FRAND Injunction
I. Delaying/Staying Injunctions in Time
1. Pending Appeal
2. Selling Off/Fulfilling Existing Orders
3. Redesign
4. Other Cases
J. Denying or Modifying Injunctive Relief Due to Considerations of Public Interest
K. Denying or Modifying Injunctive Relief Due to Procedural Considerations
L. The Impact of Validity Concerns on the Grant of an Injunction
M. Modifying Injunctions
References
Cases
Regulatory and Legislative Materials
Books, Articles and Online Materials
14 United States
A. Basic Standards with Respect to Preliminary and Permanent Injunctions
1. Permanent Injunctions
2. Preliminary Injunctions
B. Other Factors in the Availability of Injunctive Relief
1. Sovereign Immunity
2. Additional Grounds for Patent Unenforceability or Denial of Injunctive Relief
3. Parallel Proceedings and Appeals
C. General Judicial Discretion to Tailor Injunctive Relief
1. Timing
2. Tailoring of Scope
3. Ongoing Royalties
D. Enforcement of Injunctions through Contempt Proceedings
E. Conclusion
References
Cases
Regulatory and Legislative Materials
Books, Articles and Online Materials
15 Issuing and Tailoring Patent Injunctions: A Cross-Jurisdictional Comparison and Synthesis
I. Injunctive Relief in Patent Cases: Comparing Modalities of Flexibility
A. Issuance of Injunctions
1. Permanent Injunctions
a. The Discretion Spectrum and Conceptual Models
b. Discretionary Levers When Injunctions Are Issued as of Right
c. Judicial Discretion When Injunctions Are Viewed and Practiced as Types of Remedies
2. Stays Pending Appeal
3. Issuance of Preliminary Injunctions
B. Content of Injunction Orders
1. Tailoring the Scope of Injunctions
2. The Range of Tailoring Approaches to Injunctive Orders
3. Compensation by Infringers
4. Enforcement of Injunctions
C. Institutional Factors
II. Assessing Similarities, Differences and Outcomes
A. Tailoring and Refusal
B. Discretion and Proportionality
C. International Context
D. Trends and Future Directions
References
Cases
Regulatory and Legislative Materials
Books, Articles and Online Materials
