Here We Go Again: Has the European Court of Justice revived the cross-border patent injunction?

December 2012

Abstract

After a brief period of inactivity, the European Court of Justice has revisited the subject of pan-European cross-border injunctions. In Solvay SA v. Honeywell Fluorine Products Europe BV and Others, the ECJ was asked to elaborate on the requirements for granting such injunctions in proceedings on the merits, and to examine whether it is permissible to grant these injunctions in provisional proceedings. After the Advocate General issued an advisory opinion in this matter, the ECJ has now seemingly again opened the door to the possibility of granting such injunctions. After briefly outlining the history cross-border injunctions, this article will examine the requirements for their granting. Then, the Advocate General’s guidance will be considered, and practical suggestions concerning Solvay will be offered. These suggestions will take into account both the law surrounding cross-border injunctions, and broader considerations surrounding patent harmonization in Europe.

Author

Paul Coletti

Associate Patent Counsel, Johnson & Johnson, USA

Mr. Coletti is an Associate Patent Counsel of Johnson & Johnson, where he has been employed since 1987. At J&J, Mr. Coletti has overall patent responsibility for J&J’s Medical Devices companies. His practice extends over all fields of patent law, including prosecution, litigation and client counseling. He is also active in various patent and industry organizations, such as the US Chamber of Commerce, IPO, AIPLA and AdvaMed, and serves on the USPTO-EPO Bar Liaison Group. He is also active in giving presentations to various patent-related organizations, and has had various publications over the years, including in IICJ. Paul has a BS in Mechanical Engineering (1980) from Polytechnic Institute of New York (now part of NYU); an MS (1981), also in Mechanical Engineering from Purdue University; and a JD (1985) from the University of Notre Dame. Prior to joining J&J, Mr. Coletti served as an associate in a patent boutique in Chicago, where he dealt with all aspects of intellectual property law. He also worked as an engineer for a brief time with Bell Laboratories.

Abstract: Are Risk Evaluation and Mitigation Strategy (REMS) patents Orange Book listable (or even should be)? A straightforward question with a lot of disagreement. This paper discusses recent litigation on...Read more

Joanna Brougher

Owner & Principal, BioPharma Law Group PLLC, USA

Tom Irving

Partner, Marbury Law Group, USA

Stacy Lewis

Law Clerk, Finnegan, USA

Mark Feldstein

Partner, Finnegan, USA

Adriana Burgy

Finnegan, USA

Creative Claiming Strategies

Innovator companies in the biopharmaceutical space are looking to their patent counsel for creative patent claiming strategies to protect their assets. In this article, using the Federal Circuit opinions in...Read more

Angela Sebor

Director Intellectual Property, Tolmar, Inc., USA

Xiaoguang Michelle Gao

Associate VP - Assistant General Patent Counsel , Eli Lilly and Company, USA

Stacy Lewis

Law Clerk, Finnegan, USA

Benefits of a Global Mindset to the Administrative Backbone of an Intellectual Property Department

The backbone of a well-functioning Intellectual Property department is made up of three major elements: the people, the systems and the processes that connect those people and systems. This paper...Read more

Maja Schmitt

Head of Global Administration, Dsm , Netherlands

Innovative Programs in Technology Transfer: An Overview of Cedars-Sinai’s Technology Transfer International Program and Its Complementary Diagnostic Development Unit, 3rd Street Diagnostics

Technology transfer offices at nonprofit academic medical centers face many challenges in their mission to protect and commercialize the intellectual property developed at their institutions. To address these challenges and...Read more

Alexander Chai

Assistant Legal Counsel, Cedars-Sinai Medical Center, USA

Nirdesh Gupta Ph.D.

Director of IP Portfolio Management & Licensing, Cedars-Sinai Medical Center, USA

James Lau

Singapore

Here We Go Again: Has the European Court of Justice revived the cross-border patent injunction?

Abstract

Author

Company

Johnson & Johnson

Related Papers