Preliminary injunctions in Norway

06.07.2012

According to Norwegian law, preliminary injunctions are available for the patentee in order to preliminarily stop an infringement. The motion for a preliminary injunction should be filed with the District Court where the alleged infringer has its place of business, or, where the infringing activities take place.

The procedure is similar to an ordinary court action, but quicker.  Normally there will be an oral hearing in which the case is pleaded, and in which fact and expert witnesses of the parties are heard. There is only one professional judge deciding, but the judge may, at his own discretion, appoint one or more expert witnesses to help with the technical assessments.

It will normally take between 2 weeks and 2 months before the hearing is held, and the decision comes within days, sometimes weeks, thereafter. The decision can be appealed. The enforcement of a preliminary injunction is normally not stayed pending an appeal.

It is important to note that in a preliminary injunction action, invalidity is an available defence argument, whereas in ordinary cases (concerning infringement, damages and permanent injunction), that is not the case, and the defendant will have to challenge the validity of the patent in a separate law suit filed with the Oslo District Court. However, if the District Court in the decision concerning the preliminary injunction, finds that the patent is invalid and therefore does not grant a preliminary injunction, this does not mean that the patent is invalidated. Invalidity of a patent can only be decided by the court in an invalidity law suit.

It is possible to obtain an ex parte preliminary injunction
Under exceptional circumstances it is possible for the court to grant a preliminary injunction without hearing the alleged infringer. A decision granting an ex parte preliminary injunction is based on the plaintiff substantiating that deferring a decision until the other side can voice their views, normally in a hearing and/or a defence pleading, would pose a risk.

In a recent decision dated 19 June 2012 from the Oslo Office of the City Recorder, which handles motions for preliminary injunctions in Oslo, Bayer Pharma AG (Bayer) was granted an ex parte preliminary injunction against Sandoz A/S (Sandoz). The patent-in-suit, patent NO 327588, had previously been subject to invalidity proceedings in a case between Bayer and Teva Pharmaceutical Industries Ltd. (Teva). However, in its judgment on 1 June 2011 Oslo District Court did not invalidate the patent-in-suit.

In the correspondence between Bayer and Sandoz prior to Bayer’s motion for a preliminary injunction, Sandoz legal representatives admitted that Sandoz’ method did infringe the patent-in-suit. However, Sandoz argued that the patent-in-suit was invalid. Sandoz’ entry into the market lead to Bayer filing for an ex parte preliminary injunction.

In its decision, the Oslo Office of the City Recorder emphasized that the validity of the patent-in-suit had been evaluated by Oslo District Court in the judgment between Bayer and Teva. The Oslo Office of the City Recorder concluded that if an ex parte preliminary injunction was not granted, Bayer would be inflicted with substantial and irreparable damages. The decision states that Bayer’s patent rights shall not be converted into a pure claim for damages, which would have been the situation if a preliminary injunction had not been granted.

We believe that the decision from the Oslo Office of the City Recorder sets the bar for the granting of an ex parte preliminary injunction concerning patent infringements in the pharmaceutical field.

How to reduce the risk of an ex parte preliminary injunction
To reduce the risk of an ex parte preliminary injunction being issued, it may be wise of the alleged infringer or its legal representative to keep in touch with the alleged infringer’s local District Court in order to be able to reply quickly if a motion for a preliminary injunction is filed.

If the court is aware of the fact that alleged infringer has legal representation with all powers required to accept service of any legal documents from the court, and which is ready to respond swiftly to any request of the court and to appear before it on short notice, we believe that the risks of receiving an ex parte preliminary injunction is greatly reduced. However, there is no guarantee that an ex parte preliminary injunction will be avoided.