Preliminary Injunctions Readily Available For Process Patents In The UK

The UK High Court has again shown its willingness to grant preliminary injunctions in its decision BASF v Sipcam (UK) Limited. (see our previous article "Preliminary injunctions available in the UK despite first instance invalidity finding"). This decision highlights the importance of pre-trial conduct and the need for cooperation between parties if they are to avoid adverse decisions in actions for injunctive relief in the UK.

Patentees will be pleased to see the UK courts handing out preliminary injunctions for process patents, even when the court thinks the issues of infringement are far from clear cut.

The dispute

BASF holds a patent protecting a process of encapsulating pendimethalin, a herbicide used to treat fields of wheat and barley. The patent relates to BASF's encapsulated pendimethalin product sold under the brand name Stomp Aqua. The patented process requires a particular order of steps with regard to the addition of a salt and a wall forming agent which, according to the patent, leads to better encapsulation and associated advantages. In January 2013 Sipcam obtained a marketing authorisation to launch its competitor encapsulated pendimethalin product, Most Micro, in the UK. During correspondence between the parties throughout 2013, BASF argued that sales of Most Micro would infringe its patent whereas Sipcam considered that there would be no infringement. With the parties unable to reach an agreement and Sipcam preparing to launch its product in the UK, BASF applied to the UK Courts for an interim injunction to restrain sales of Most Micro pending full trial. In the end, the nature of the correspondence between the parties during 2013 proved to be the crucial factor in the injunction being granted in BASF's favour.

Evasion

The obvious way to resolve the dispute would have been for Sipcam to allow inspection of its production process to enable determination of the relative order of addition of the salt and the wall forming agent. In correspondence between the parties, BASF repeatedly requested inspection but Sipcam refused to allow this on terms that would have enabled determination of when the salt is added. In deciding in favour of BASF, the judge repeatedly refers to the refusal to allow unfettered inspection and criticises Sipcam for its evasion on this crucial aspect, commenting that Sipcam "could and should have accepted an inspection much earlier and all this could have been avoided". The clear take home message here is...

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