An injunction, like specific performance, is an equitable remedy. Specific performance compels a plaintiff to perform their contractual obligations, and is granted as final relief at trial, whilst an injunction extends to a far broader range of circumstances, not limited to breach of contract. Further, an injunction can be granted as interlocutory relief (prior to trial) or as a final injunction at trial and different principles apply to each.

Damages must be inadequate before an injunction for a common law cause of action is granted; conversely there is no need for inadequacy of damages to be shown for injunctions for purely equitable causes of action such as for a breach of fiduciary duty.

Equitable and common law injunctions are subject to bars to relief (hardship, laches, and clean hands). Statutory injunctions are governed by the terms of the statute, not by general equitable principles.

Injunctions can also be classified in accordance to their effect. Thus a prohibitory injunction prevents someone from doing something whereas a mandatory injunction compels them to do something.

The purpose of orders of specific performance of a contract and of injunctions is to compel the performance of legal obligations. Many, though not all, of the considerations relevant to an order granting specific performance of a contract are also germane to the award of an injunction. Matters such as inadequacy of damages, hardship and the ability of a court to supervise the execution of its own orders are relevant to both remedies (see textbook chapter 3). Underlying the principles governing these orders are policy questions relating to the nature and limits of judicial coercion to which monetary remedies, such as damages, do not usually give rise. These questions include: to what extent can private law (as opposed to the criminal law) restrict individual freedom, including a person’s freedom to select his or her employment; can a court compel parties whose commercial relationship has broken down to cooperate with each other; and what are the limits of a court’s power to prevent wrongdoing, for example where the wrong is likely to occur outside a court’s jurisdiction but will cause damage within its jurisdiction?

The title of this chapter may look like a grab bag of remedies, but this is not the case. Specific performance and injunctions are equitable remedies. The remedy of equitable damages is a creature of statute available either in lieu of or in addition to the equitable remedies of specific performance and injunction. Thus, the three remedies are closely related. They will be discussed in turn.

The equitable obligation of confidence is used to protect information from unauthorised misuse or exploitation by others. The action now has two significant aspects; it is traditionally used to protect commercially valuable information such as trade secrets, and it is increasingly used to protect personally private information. Whether the same considerations apply to these two aspects of the action is an open question. Though the obligation of confidence is one of the oldest in equitable jurisdiction, it has only recently been called upon to protect interests previously thought to be ineffectively protected. The long hiatus between the action’s origins and its current development is partly due to the unusual position confidentiality has occupied. Whereas many equitable responsibilities, such as trust or fiduciary obligations, have no direct common law counterparts, confidentiality can be regulated by regimes other than equity. Up until the mid-twentieth century most cases concerning the equitable obligation of confidence also involved a breach of an obligation of confidence not sourced in equity

The right to claim contribution in competition law is ensured by EU law but its exercise takes place under national laws. This Chapter investigates English, German, French and Polish rules on contribution and their application in the competition law context. On the one hand, the assessment is pragmatic. It analyses questions that are likely to appear when pursuing contribution claims. Does a right to claim contribution exist in a given legal order? On what basis and in which form can contribution be claimed? Against whom can contribution be claimed? What legal test must be met to receive contribution? What is the criterion for allocating liability between antitrust infringers? The analysis shows that the allocation of liability can be debated, as there are several possible methods of dividing liability: relative fault, causation, illicit gains, values of sales, market shares and pro capita. At the same time, the Chapter reflects on whether the requirements and modifications stemming from EU competition law require the adoption of a competition law-specific approach to contribution and makes proposals on how rules on contribution can be improved.

The regulation of patent enforcement in Europe is characterized by the typical multi-layered EU law system of primary EU law, secondary EU law, i.e. unification and harmonization of member states’ laws by way of regulations and directives, and member states’ laws which in particular implement the EU directives into national law.1 Primary EU law, insofar as it is similar to written constitutional law, establishes the competence and baseline for all EU legal actions. Secondary legislation is based on the competences of the EU established in primary law and unifies certain areas of law (by way of directly applicable unitary regulations) or harmonizes member states’ laws by way of directives that are not directly applicable but addressed to the member states and that typically leave the member states certain leeway for manoeuvre when they implement such directives in their national law systems. Both EU primary and secondary legislation take primacy over national law; this so-called principle of primacy of EU law has been developed by the Court of Justice of the European Union (CJEU) in its case law2 and is meanwhile also laid down in a declaration concerning primacy,3 which is part of the Treaty of Lisbon.4

All patent cases are heard by the specialized IP chamber of the District Court of the Hague. Appeals (which are de novo) are heard by the specialized chamber of the Court of Appeal of the Hague. Thereafter an appeal (on points of law) is possible without the necessity of leave to the Supreme Court. The specialized chamber in first instance issues between about fifty and seventy decisions each year. The Court of Appeal issues about twenty and the Supreme Court around five. Of course, numbers vary from year to year. The courts have a good reputation in patent matters. The UK, German and Dutch courts take into consideration each other’s decisions in cases invoking the same European Patent and normally give reasons if they do not follow each other’s decision (which is more the exception than the rule). The Netherlands does not have a bifurcated system for patent cases: validity and infringement are always dealt with in the same proceedings. Thus, if an infringer challenges the validity of the patent, the court will normally first decide on the validity of the patent and only turn to infringement if the validity of the patent is upheld. In other words, a Dutch court will not order an injunction unless it has first established that the patent is valid, and the only way that an injunction can be granted on the basis of a patent that is later invalidated is if the decision on validity is overturned on appeal.1 This is true in proceedings on the merits, where the court will always rule on the validity of the patent if it is challenged, but also in interim relief proceedings, where the court will make a preliminary assessment of the patent's validity before imposing interim relief, denying it if there is a reasonable, not-to-be-ignored chance that the patent will be revoked or invalidated.

In the preceding chapters of this book, we have seen a variety of national approaches to the issuance and tailoring of injunctive relief, characterized by a range of similarities and differences among jurisdictions. In this chapter, we synthesize the principal features of these different legal systems, provide an analytical framework for comparing them, and offer our observations about trends and the outlook for the future.

Israeli law, in general, is based on the principles of English common law, in which an injunction is perceived as a form of equitable, discretionary relief.1 Historically, injunctive relief was granted based on discretionary criteria, including the irreparable injury rule (in the absence of an injunction, the plaintiff would be caused an irreparable injury, which could not be compensated for by monetary relief); the balance of hardships between the plaintiff and defendant (known also as the “balance of convenience”); and the clean hands rule (equitable relief is only granted if the plaintiff acted in a decent and moral manner, disclosing the relevant facts).2 Another important criterion was the public interest.3

Despite their outward differences, all modern legal systems share a number of fundamental features. One of these features is the availability of remedies for injuries that are proven to an adequate legal standard. As explained by Douglas Laycock, one of the preeminent scholars of common law remedies: “The choice of remedy and the measure and administration of the remedy chosen pose a distinctive set of questions – logically separate from the liability determination and usually considered subsequent to that determination – focused on what the court will do to correct or prevent the violation of legal rights that gives rise to liability.”1

Canada is a federal system with jurisdiction shared between the federal government and the provinces. Patent law is a matter of exclusive federal jurisdiction and is based on the federal Patent Act. The federal nature of Canada is reflected in a bifurcated judicial system. The Federal Courts of Canada, a statutory court system with defined jurisdiction,1 and the provincial superior courts, courts of inherent jurisdiction, corresponding to the traditional English common law courts, both have jurisdiction over patent infringement.2 However, the Federal Court has exclusive jurisdiction to declare a patent invalid,3 and the very substantial majority of patent cases are decided by the Federal Court. Consequently, it is largely the case law of the Federal Courts which governs the grant of injunctive relief in patent cases, subject to the guidance of the Supreme Court of Canada.4

For patent litigation, Germany is among the most frequented venues in Europe.1 Both large, international law firms and highly specialized boutique firms are active before German courts. Not only the Federal Supreme Court (Bundesgerichtshof – BGH) but also a handful of major first- and second-instance venues, such as Düsseldorf, Hamburg, Mannheim and München, play an important role in shaping German patent law. Stakeholders, such as patentees, licensees, inhouse and outside counsel, scholars and non-German courts or lawmakers, therefore have a strong interest not only in the established legal framework for patent litigation in Germany, but also in shifts this framework is, of late, undergoing. At the same time, the language barrier complicates insights on these matters, not least for Anglo-American stakeholders, although a slowly increasing part of scholarship, and even of case law, is available in English. Against that background, this chapter sets out to explain basic structures and recent developments in German patent injunction law. It covers the main types of and requirements for such injunctions under German law (Section A), the injunction’s scope as claimed and granted (Section B), bifurcation and stays (Section C), defences and limitations (Section D), as well as alternatives to injunctive relief (Section E), before a conclusion and an outlook (Section G) round off the chapter.

United States courts take a context-sensitive approach to the grant of injunctive relief for US patent infringement. Such context-sensitivity is consistent with the US Patent Act, which indicates that courts “may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.”1 In common law jurisdictions, “equity” is generally viewed as resistant to strict rules and willing to make exceptions in light of particular circumstances.2 In accordance with this vision of equity, the generalist trial judges of US district courts3 consider various factors in determining whether injunctive relief is justified and have great discretion to tailor injunctions in a particular case.4 On the other hand, US courts have continued to grant injunctive relief in most infringement cases in which a patent owner prevails, particularly when the patent owner is in direct competition with the adjudged infringer.5 In contrast, US courts commonly deny injunctive relief for patent owners who are “nonpracticing entities” or “patent trolls” – forms of patent-owning entities that do not engage in substantial commercialization or use of the patented invention or variants of it.6 Further, the US Court of Appeals for the Federal Circuit has held that the US Patent Act does not authorize injunctions to correct past patent infringement.7 Instead, injunctions are to be granted only as a means to prevent future infringement.8

Most UK patent litigation takes place in England and Wales, where it is heard by either the Patents Court (larger, more complex and/or more valuable cases) or the Intellectual Property Enterprise Court (smaller, less complex and/or less valuable cases). These are both specialised courts. It is normal in both courts for issues of infringement and validity of the patent to be heard together. The intellectual property bar in England and Wales consists of a considerable number of highly specialised and skilful advocates, most of whom have a Science, Technology, Engineering and Mathematics (STEM) degree as well as a legal qualification. They are instructed by both large multinational firms and small boutique firms of lawyers, and they are well known for being innovative, particularly with regard to procedural questions. Although there is a reasonable volume of UK patent litigation, disputes concerning injunctions are relatively infrequent.

In France, the question of injunctive relief for infringement of patents has only given rise to a very limited number of academic studies.1 Although there are quite a lot of court decisions dealing with this topic, the courts generally do not explain their reasoning on this particular point. In France, patent injunctions can only be handled2 by the specialized IP chambers3 of the general jurisdictions of Paris, which are the Tribunal Judiciaire (formerly known as the Tribunal de Grande Instance) de Paris on first instance, where the judgment is generally delivered within eighteen months, and, on appeal, the Cour d’appel de Paris, where the cases are generally adjudicated within twelve months. The highest court, the Cour de cassation only deals with matters of law, and not fact.4 On average, 170 court decisions on patent litigation were delivered per year in France between 2015 and 2019.

Injunctive relief can be found in all Polish patent statutes in the twentieth and twenty-first centuries.1 The Industrial Property Law2 (IPL) that currently regulates industrial property rights including patents also envisages this form of relief. Article 287 section 1 of the IPL provides that a patentee whose patent has been infringed, as well as exclusive licensees, may – apart from other remedies – demand injunctive relief. Generally, injunctions are perceived as a necessary corollary to patents. Patents, as exclusive rights, provide patentees with exclusivity to use an invention within limits provided in the law. The availability of injunctive relief allows patentees to protect that exclusivity.

Traditionally, intellectual property’s right to exclude has implied that injunctive relief should always be available at the conclusion of a successful infringement action.1 However, in recent years that view has evolved. As discussed in Chapter 14, in the United States, the 2006 Supreme Court decision in eBay Inc. v. MercExchange imposed a four-part test requiring the plaintiff in a patent case seeking a permanent injunction to demonstrate “(1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.”2 While this standard appears to impose quite a restrictive test, several members of the court emphasized that even under this discretionary standard, injunctive relief should remain available in the vast majority of cases.3

Injunctive relief made its first appearance in Italian legislative texts with the adoption of the 1939 Law on Patents, which empowered a court dealing with an infringement action to issue, on request of the interested party and, at court’s discretion, upon payment of a bond, an interim1 injunction preventing the fabrication and use of the patented invention for the time needed to reach a decision on the merits and for such decision to become final.2 For a long time, this has been the only provision mentioning injunctive relief in the Law on Patents.

At the time of writing, the United Kingdom remains a member state of the European Union. Accordingly, this chapter is written from that perspective. My thesis is simply stated: European law not merely enables, but requires, the courts of the member states to be flexible when considering whether or not to grant an injunction in a patent case, and to tailor any injunction to the circumstances of the case. An injunction can only be granted when, and to the extent that, it is proportionate and strikes a fair balance between the fundamental rights that are engaged. All that is needed is for the courts of the member states consistently to apply the principles laid down by the legislature and by the Court of Justice of the European Union.

On 1 September 2013 the jurisdiction in intellectual property matters in Finland was reformed. The Market Court, which was created in 2002 for consumer protection and competition law cases, was now also given exclusive jurisdiction in patent, trademark and design registration appeals, and intellectual property disputes (infringement, invalidity etc.).1 Previously, the District Court of Helsinki had exclusive jurisdiction in patent disputes and the Finnish Patent Office dealt not only with registration matters but also with registration appeals.