Patent Litigation in Practice Series: Spotlight on Ireland: Preliminary Injunctions in Ireland

Introduction 

Ireland has witnessed a significant increase in patent litigation over the past decade, largely benefitting from the adept case management of the Commercial Court. In response to this surge, a dedicated Intellectual Property and Technology list was established within the Commercial Court in 2021, primarily gaining traction in the patent domain. 

Key developments in Irish patent litigation

The dynamic nature of patent disputes, especially in the pharmaceutical sector has led to several precedents in Irish case law. Notably, the Court of Appeal adopted the principle of comity in the case of Norton (Waterford) Limited t/a Teva Pharmaceuticals Ireland v Boehringer Ingelheim Pharma GmbH & Co KG [2022] IECA 58. 

Landmark case: MSD v Clonmel 

The most significant development in Irish patent litigation was the Supreme Court’s decision in MSD v Clonmel [2019] IESC 65, which redefined the test for injunctive relief. This case reimagined the long-standing Campus Oil (Campus Oil v Minister for Industry and Energy (No. 2) [1983] 1 IR 88 criteria focusing on the adequacy of damages and the balance of convenience, alongside whether there was a fair issue to be tried. 

Prior to this case, the High Court had denied a preliminary injunction sought by the patentee in Gilead v Mylan [2017] IEHC 666, but the revised test from MSD v Clonmel marked a turning point. 

The 8-step process for preliminary injunctions 

In its seminal judgment, the Supreme Court set out an 8-step process for courts to consider when deciding on preliminary injunctions: 

1. Whether a permanent injunction might be granted if the plaintiff succeeds;
2. Whether there is a fair issue to be tried;
3. If there is a fair issue to be tried, how best to manage the matter pending  trial,  considering both the balance of convenience and the balance of justice;
4. Whether damages are an adequate remedy;
5. In commercial cases, the courts should be “robustly sceptical” of claims that damages are inadequate;
6. While difficulty of assessing damages is a factor which can be considered, it is not determinative of the issue; 
7. Although the adequacy of damages is…