PATENT LITIGATION – TURKIYE: The Regional Appellate Court Lifts Preliminary Injunction Order due to the pending invalidation action. The preliminary injunction (PI) decisions granted by the first instance courts can be objected by the party against which the PI decision is rendered before the first instance court that rendered the decision. If the first instance court rejects the objection against the PI decision, the objecting party can appeal the PI decision before the Regional Appellate Court. In a Regional Appellate Court decision dated May 3, 2024, the Regional Appellate Court evaluated a PI decision rendered by the first instance court against the defendant generic drug company and lifted the PI decision. The Regional Appellate Court decision was a first in terms of lifting of a PI decision due to a pending invalidation action. The motivation of the Court was that the defendant generic drug company had filed an invalidation action against the subject matter patent and the first instance court shall wait for the decision on invalidation action. The Regional Appellate Court further stated that in case the patent is invalidated, the protection granted to the patent will be deemed to have never born by referring to the retroactive effect of the invalidity. In the event of such possibility, a PI will have irreparable consequences and a PI cannot granted at this stage due to the risk of causing the economic damage on the defendant side. Although the Regional Appellate Court states that it is possible to request a new PI and the first instance court to re-evaluate this request based on the results of the expert examination to be conducted in the pending invalidation action, the Regional Appellate Court’s decision that lifts the is still wrong in so many grounds. First of all, the Turkish patent law does not have a bifurcated system. Thus, the validity may be decided in the same proceedings with infringement before a single court or separately in an independent court action in parallel with the infringement action. In the case of an independent invalidity action, the court overseeing the infringement claims may stay its case until a decision in the invalidation action is rendered or the invalidation action is finalized. However, the courts shall take a different stance when it comes to PI. PI is granted in cases where there is a concern that it will become significantly difficult or completely impossible to obtain the right due to a change in the current situation, or that serious damage will arise due to delay. It seems the Regional Appellate Court has completely ignored the fact that a decrease will occur in the price of the originator drug and that such a decrease will be impossible to reverse even if the patent is found to be valid and infringed. Moreover, the fact that an invalidity action is filed by the defendant itself cannot be considered as a ground to lift the PI order, as the courts also have the option to secure the possible damages by the guarantee/bond ordered to be paid by the plaintiff in favour of the defendant for possible risks.
Additionally, this decision disregards the balance between the patentee and the third parties. As the subject matter of the infringement action relates to the first generic drug, the price of the originator drug will decrease upon the launch of the first generic drug in the market and the Regional Appellate Court seems not to have considered this fact in its decision.