It is increasingly common— particularly in the context of Standard Essential Patents and/ or the pharmaceutical industry (for example, generic drugs entering various markets)—that infringement and, therefore, damage occur across different jurisdictions.  The situation gives the plaintiff the option of selecting the forum.  With jurisdictions in Asia Pacific being either extremely important from a manufacturing or a sales point of view—or both, understanding the key issues for taking action will give plaintiffs a more informed strategy.   

Executive Summary:

We compare below the difficulty level of obtaining an interlocutory injunction against a case pendency to trial. The importance of obtaining such an injunction is probably greater where it takes longer for the case to reach a first-instance decision— – as is the case with the Philippines.

*China is still in the difficult category at 7 but down from 8, due to a recent key decision—an interlocutory injunction was granted at first instance although discharged on appeal.

The common theme (except for Indonesia) is that the court will need to consider a ‘balance of convenience’ assessment to determine which party will suffer greater harm from the interlocutory injunction. However, each country may articulate this requirement differently and vary its application—some leaning towards the status quo meaning no injunction is granted. At the back of the judge’s mind is case pendency— – the greater the delay, such as in the Philippines, the greater the harm to the plaintiff if interlocutory injunction is not granted.

Singapore

Threshold Requirements:

1. Serious question to be tried.

2. Prospects of success must be substantial.

3. Damages would be inadequate.

4. Balance of convenience favors granting the injunction.

Procedure:

• Applications are typically inter partes unless justified otherwise.
• An undertaking for damages is required.

Key Decision:
In Millennium Pharmaceuticals Inc v. Drug Houses of Australia Pte Ltd (2018), the court denied an injunction in a patent case due to quantifiable damages being available.  The applicant’s argument of price erosion was rejected as the plaintiff could restore monopoly prices when it eventually succeeds at the trial. The Court, therefore, dismissed the injunction.

Malaysia

Requirements:
Similar to Singapore, the setting follows American Cyanamid principles. There are currently no reported decisions on patent infringement injunctions.

Indonesia

Threshold Requirements:
Evidence of strong indications of patent infringement is necessary.

Procedure:

• Initial ex parte decision followed by an inter partes hearing within 30 days.
• If affirmed, the injunction becomes permanent; if not, further lawsuits may be barred.

Key Decision:
Limited case law indicates that interlocutory injunctions are rare in Indonesia.  However, this is counterbalanced by the relatively short time frame to first instance decision (180 days for patent cases—time limit prescribed in the Patent Law and strictly observed in practice).

Philippines

Threshold Requirements:

1. Clear legal right needing protection.

2. Urgency and risk of irreparable harm.

3. Balance of convenience favoring the applicant.

Procedure:
Infringement actions can be filed with either the Bureau of Legal Affairs or Commercial Court, with a preference for the former due to expertise.

Key Decision:

In 2015, Boehringer filed a patent infringement action with the BLA against Suhitas for the production of telmisartan. Boehringer’s first request for a TRO/preliminary injunction was denied. Boehringer filed for reconsideration and the preliminary injunction was granted in 2016. The first instance decision (with permanent injunction) was handed down in 2021, i.e. after six years.  Suhitas appealed to the Director General of the IPOPHL against the BLA’s decision, and this was dismissed. The fact that a permanent injunction was only granted after 6 years demonstrates the importance of a preliminary injunction to preserve the patentee's right in the meantime.

Thailand

Threshold Requirements:
Explicit evidence of infringement is required, along with balancing potential harms to both parties.

Procedure:
Applications start ex parte and require prompt notification to the accused party.

Key Decision:
In a rare case involving fire extinguishing balls, the Supreme Court refused an interim order but allowed for evidence collection to quantify potential damages later. 

From surveying other decisions, one common reason for refusal is that the plaintiff could not prove the irreparable loss that would have been caused if a preliminary injunction had been denied.

Vietnam

Threshold Requirements:
Demonstration of an urgent need to protect rights or prevent serious consequences is essential.

Procedure:
Evidence must be provided to justify urgency; courts have been reluctant to grant injunctions in IP cases.

Courts are usually reluctant to grant interlocutory injunctions in IP litigation. Applications have been dismissed as they could not meet the criterion of “a risk of irreparable damage to the intellectual property rights holder” as stipulated in Article 206.1 of the Vietnam Intellectual Property Law.

It will be necessary to see whether this current practice will change following the establishment of specialized IP courts commencing from 1 January 2025.

China

Threshold Requirements:
The applicant must demonstrate legal grounds for claims and urgency for preliminary injunctions.

Procedure:
Applications can be filed at any stage before a final decision; delay can negatively impact chances for an injunction.

Key Decision:
In Dreame Technology v. Beijing Roborock Technology Co., Ltd., an interlocutory injunction was overturned due to significant delays in application and lack of clear evidence of infringement.

The decision demonstrates the difficulty in obtaining injunctions. The situation, however, is counterbalanced by the relative expediency in progressing to the first instance decision—6 to 12 months

Conclusion

When a plaintiff is suffering infringement and damage in a jurisdiction, the choice is usually what to do in that particular jurisdiction.  However, for many rights holders, the issues span a whole region, and the aim of our review is to provide a high-level understanding of key issues to consider when deciding which jurisdiction to choose—or indeed to inform a strategy that covers many jurisdictions, taking into account the speed of trial, likelihood of injunctive relief, general policy informing the decisions of the courts, etc. In such a large region, there are opportunities to put pressure on defendants from a number of difficult angles, so that it is forced to fight in unfamiliar jurisdictions and where uncertain outcomes can be a ‘friend’ of the plaintiff. 

Authors: Chris Vale, Kin Wah Chow, Evi Triana, Edmund J Baranda, Peeraya Thammasujarit, Nontaya Chulajata, Yen Vu, Landy Jiang (from Lusheng), Terry Lu (from Lusheng).

TAGS

• South East Asia
• China
• pharmaceuticals