The Eastern High Court confirms: "Not possible to bring PI proceedings based on a patent application"

On 17 June 2022, the Maritime and Commercial High Court delivered a landmark decision dismissing for formal reasons Novartis' requests for preliminary injunction and order based on a pending European patent application. Read the article.

Novartis appealed the Maritime and Commercial High Court's decision to the Eastern High Court requesting that the High Court revoked the decision and that the cases be remitted to the Maritime and Commercial High Court for further consideration. During the preparation of the appeal case, the EPO Examining Division issued (on 15 September 2022) its "decision to grant" a European patent based on Novartis' patent application. The date of mention of grant and publication in the European Bulletin would take effect on 12 October 2022. Based on these communications, Novartis informed the High Court that it expected the Danish validation of the granted European patent would take place on 19 October 2022.

However, despite patent grant being imminent, the Eastern High Court affirmed the Maritime and Commercial High Court's decision and thus dismissed the cases due to Novartis' lack of legal interest. In its reasoning for the decision, the Eastern High Court notes, inter alia, that under Danish law it is not possible to obtain a preliminary injunction and order based on a patent application. Therefore, applicants requesting preliminary injunctions and orders based on a patent which is yet to be granted cannot be regarded as having a sufficient actual, legal interest in the request(s).

It was irrelevant to the Eastern High Court's assessment of the question concerning legal interest that, under the present circumstances of the case, the formal grant and national validation of the patent was imminent, since it was still undeniably clear that at the time of the High Court's decision, the patent was not formally granted and validated in Denmark.

With its decision, the High Court has definitively confirmed that a case concerning preliminary injunctions and orders cannot be brought before the Danish courts until the patent forming the basis of the proceedings has been formally granted by the patent authority. Thus, the High Court has provided a clear and precise framework for future preliminary injunction cases: "It is an unconditional requirement for bringing such cases before the Danish courts that the patent has been formally granted, and even in cases where it is certain that the patent will grant and where the grant is imminent the courts will have to dismiss for formal reasons and reject the application for preliminary injunction and order for lack of legal interest (lack of actuality)".

We represented Viatris (one of the defending companies) in the case.