Patent expiry is not the end of the story. While patent expiry prevents further patent enforcement, there is something to be said about the protection granted to the invention while the patent was in force through injunctive relief whenever there is no merits decision on an infringement or threat of infringement. In the UPC context, this means that expiry often shifts the dispute rather than resolves it. The question is no longer “Is the patent being infringed?” or “Is the patent threatened to be infringed?” but rather “Was the injunction justified?" This article explores this shift in the context of injunctive relief granted by the UPC and the questions it raises regarding liability and damages.
The granting of an injunction assumes that an infringing act occurred during the time period the patent is in force. After expiry, an injunction does not have the effect of excluding competitors from the market.
However, while injunctive relief may lose its forward-looking effect after expiry, its procedural and economic footprint often remains. This is the case, for example, in the pharmaceutical sector, particularly when the medicine in question is intended for public hospitals, which are driven by time-constrained tender procedures and regulatory steps that must be undertaken in accordance with a strict calendar. In cases such as this, injunctive relief may give rise to exclusionary effects.
This means that once a patent expires, the Court’s logic must shift from upholding an exclusion to awarding damages for a wrongfully granted injunction.
