A Careful Balance: Injunctions, Patentees' Rights And Public Interest

• Published date: 07 January 2021
• Subject Matter: Intellectual Property, Patent
• Law Firm: Bristows
• Author: Ms Rachel Mumby and Olivia Henry

It is important for the Courts to find the right balance between patentees' rights and the public interest when deciding whether to grant an injunction. Rachel Mumby and Olivia Henry explore some of the issues which come up in the life sciences sector.

This article was first published on the Patent Lawyer Magazine, December 2020.

Patents provide exclusionary rights. It is stated in TRIPS¹ that judicial authorities should have the power to issue injunctions to prevent patent infringement. Indeed, following a finding of infringement of a valid patent, often after a hard-fought trial, many patentees want to ensure that their right to exclude others is exercised.

In England, injunctions are a discretionary remedy². Often it is clear that an injunction is the appropriate remedy; whereas in other circumstances, the patentee's exclusionary rights need to be fettered in order to strike a balance between the rights of the patentee and the public interest. Indeed, whether or not an injunction should be granted, the scope of that injunction, and what should be provided in lieu of the injunction can be the subject of significant debate.

When considering patent injunctions, it is important to remember the policy considerations underlying the patent system. In particular, the patent system is designed to promote innovation. Patentees are given an exclusionary right with a 20-year term in return for disclosing their invention to the world. During the patent term, prices are generally kept relatively high and the choices open to those wanting to use the patented invention can be restricted, neither of which are themselves directly in the public interest, but this is balanced out by the public interest in stimulating and sharing innovation.

It should also be kept in mind that the impact of a Court refusing an injunction is in effect to force the patentee to grant a licence. If specific public interest criteria are met, compulsory licences and crown use exemptions are available which in effect (and likely temporarily) deny the patentee of their exclusionary rights. Alternatively, patentees may decide voluntarily to forego their exclusionary rights and even, potentially, their rights to any compensation for infringement.

However, absent the statutory tests being met, the English Courts have historically been reluctant to insist on licences being granted³.

Is it right to grant an injunction?

In the life sciences sector, many will be familiar with disputes between a patentee and a third party which wants to launch a generic version of a particular medicine. In these circumstances, an injunction is often particularly important to a patentee. This is because there are usually severe pricing implications if a generic version of a particular...