SpicyIP Tidbit: Non-Working will not Work: Delhi High Court’s Inquisitorial Assessment of Interim Injunctions 

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Those familiar with IP litigation in India would know the significance of obtaining an interim injunction since that “interim” period is often so long that it can end up having significant commercial value as well! And while there have been numerous instances where the courts have looked past their obligations to pass reasoned orders while granting interim relief, I recently came across an interesting order from the Delhi High Court where the court denied the relief which the plaintiff was hoping for, owing to non-working of the patent in India. 

On August 4, 2023 in Enconcore N.V v. Anjani Technoplast the court modified an earlier ex-parte interim injunction order. In doing so the court took note of the fact that the plaintiff’s patented products are not manufactured in India and have miniscule sales, and relied on Franz Xaver Huemer v. New Yash Engineers to highlight that injunction requests can be refused for non-working of the patent. However, unlike the Franz Xaver order, the court took a relatively softer stance on the plaintiff by imposing the condition that the defendants can supply containers and shelter homes with the impugned honeycombs as long as its clients are government organizations. The defendant had already stated that it intends to limit its supply to government organizations, so this presumably doesn’t change much from the status quo. However, the court also directed the defendants to deposit INR 25 Lakhs as security to balance the interests of both parties.

Non-working of a patent indicates that the patentees have wilfully abandoned their end of the patent bargain and the courts have consistently maintained (see also for instance FMC v. GSP Crop Science, Sandeep Jaidka v. Mukesh Mittal) that non-working of a patent is a good enough reason to not grant an interim injunction. Adding to that list, this order serves as a good wake-up call for those sleeping patentees. 

But this order highlights another contentious issue within the technical patent litigations i.e. ex-parte interim injunction orders. While the defendant’s participation in the litigation surely makes things clear (for instance the clarification on the defendant’s intention to supply honeycomb panels only to the Government), it bears noting that to ensure working of the patent should ideally have been a part of the “prima facie” assessment by the court, and should have considered before granting an ex-parte interim injunction. Going by the age old principle of prima facie case vis a vis interim injunctions, the plaintiff must have a triable issue i.e. an issue which is not frivolous or vexatious (as explained by Lord Diplock in American Cynamid case). However, in the context of patents where the rights are granted as a part of the larger bargain, to have a triable issue and exert rights, the justification that the reciprocal obligations (to work the patent) have been fulfilled should come naturally. 

Thanks to Swaraj for his input on this post. 

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