Ex parte measures in patent cases, the story continues

By Armand Killan


Since the implementation of the Enforcement Directive in The Netherlands on 1 May 2007, ex parte injunctions have been granted for a number of different IP rights, with the exception of patents. It was generally felt that a Court may be more reticent in issuing an ex parte injunction in relation to patents but on 1 April 2008, the District Court of The Hague issued the first ex parte injunction on this basis (Meijn/Tieleman, docket number 08-0517).

When analysing the decision, it seems that the Court does not apply a higher threshold for the ‘strict urgency’ and ‘irreparable harm’ requirements for the granting of an ex parte injunction for patents than for any other IP rights. Further, the District Court of The Hague expressly declared that it is exclusively competent to issue ex parte injunctions in relation to patents, basing its competence on Articles 70 and 73 in conjunction with Article 80(2) of the Dutch Patent Act. There had been a small question mark over this Article, since it was not carefully addressed in the implementation regulation. However, the view taken by the District Court of The Hague has been confirmed in an even more recent decision (Container Centralen/Schalkoort, docket number 08/0893).

Having said this, there is, as yet, no exclusive jurisdiction for the District Court of The Hague when it comes to ex parte evidential seizures in patent cases. Those seizures have been issued since the implementation date of the Enforcement Directive by several different District Courts in The Netherlands.

When the District Court of The Hague issues an ex parte injunction, it allows the injuncted party to start a normal (i.e. not ex parte) PI action on a date and time already provided beforehand in the ex parte injunction decision. This provides the possibility for the injuncted party to argue that the ex parte injunction should be lifted. In the above mentioned case Meijn/Tieleman, Tieleman succeeded in having the ex parte injunction lifted, inter alia, by virtue of the serious chance that the patent would be found invalid in proceedings on the merits for lack of inventive step. The interesting point is that that once parties are at the stage where the lifting of the ex parte injunction is considered by the Court, the District Court of The Hague has made it clear that they will not reconsider whether the ‘strict urgency’ criterion for the ex parte injunction had in fact been satisfied when ex parte injunction was originally granted. The Court is of the opinion that since both parties are present in the normal PI action, the only relevant question is whether the injunction should be maintained or not and to determine that, the Court need only decide whether the patentee has met the (less strict) criterion of urgency which applies in normal PI actions.

From the alleged infringer's perspective, it is noteworthy that since the District Court of The Hague has exclusive competence in ex parte patent injunctions, the potentially injuncted party can centralise its efforts on filing protective letters in that regard. However, one should note that this is not the case for ex parte evidential seizures as a number of District Courts are competent.




Armand Killan


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