UK: Preliminary Injunctions Readily Available For Process Patents In The UK

Last Updated: 20 February 2014
Article by Matthew Georgiou and Paul Howard

The UK High Court has again shown its willingness to grant preliminary injunctions in its decision BASF v Sipcam (UK) Limited. (see our previous article "Preliminary injunctions available in the UK despite first instance invalidity finding"). This decision highlights the importance of pre-trial conduct and the need for cooperation between parties if they are to avoid adverse decisions in actions for injunctive relief in the UK.

Patentees will be pleased to see the UK courts handing out preliminary injunctions for process patents, even when the court thinks the issues of infringement are far from clear cut.

The dispute

BASF holds a patent protecting a process of encapsulating pendimethalin, a herbicide used to treat fields of wheat and barley. The patent relates to BASF's encapsulated pendimethalin product sold under the brand name Stomp Aqua. The patented process requires a particular order of steps with regard to the addition of a salt and a wall forming agent which, according to the patent, leads to better encapsulation and associated advantages. In January 2013 Sipcam obtained a marketing authorisation to launch its competitor encapsulated pendimethalin product, Most Micro, in the UK. During correspondence between the parties throughout 2013, BASF argued that sales of Most Micro would infringe its patent whereas Sipcam considered that there would be no infringement. With the parties unable to reach an agreement and Sipcam preparing to launch its product in the UK, BASF applied to the UK Courts for an interim injunction to restrain sales of Most Micro pending full trial. In the end, the nature of the correspondence between the parties during 2013 proved to be the crucial factor in the injunction being granted in BASF's favour.


The obvious way to resolve the dispute would have been for Sipcam to allow inspection of its production process to enable determination of the relative order of addition of the salt and the wall forming agent. In correspondence between the parties, BASF repeatedly requested inspection but Sipcam refused to allow this on terms that would have enabled determination of when the salt is added. In deciding in favour of BASF, the judge repeatedly refers to the refusal to allow unfettered inspection and criticises Sipcam for its evasion on this crucial aspect, commenting that Sipcam "could and should have accepted an inspection much earlier and all this could have been avoided". The clear take home message here is that potential infringers are likely to be penalised if they refuse to cooperate with patent holders in a way which could lead to a more efficient resolution of proceedings.

Misleading correspondence

At an early stage in 2013 Sipcam indicated that it would not launch Most Micro in the spring market but would wait and launch in the autumn (i.e. late September to October). Key to Sipcam's defence was its argument that BASF unduly delayed seeking the interim injunction because it could have brought proceedings earlier in June 2013, once its requests for inspection had not come to fruition, since it knew that Sipcam intended to launch in the autumn. However, the judge held that BASF acted reasonably in trying to resolve the matter without bringing proceedings because, as things stood in June 2013, there was still time to reach a resolution before the autumn without the need for litigation. Furthermore, later correspondence from Sipcam in August 2013 was held to be misleading because it implied that Most Micro had not yet been launched and that it would not be launched until the autumn. However, it emerged that Sipcam had been taking orders and had begun to sell Most Micro in the UK in August 2013, despite its previous undertakings not to do so. It is clear that the judge penalised Sipcam for this aspect of its pre-trial conduct and this mirrors the approach taken by the UK courts in other applications for preliminary injunctions where the defendant has acted contrary to its previously stated intentions (e.g. BMS v Teva, [2013] EWHC 2863 (Pat)).

The case for infringement

Sipcam argued that its product would not infringe because it is made via an encapsulation process in which salt is only added after the wall forming agent and not before, as required by the patented process. However, BASF disagreed, relying on analysis of the Most Micro product which, it argued, showed that salt must have been present in the Sipcam process when the wall forming agent was added (i.e. salt must have been added before the wall forming agent as required in the patent). The judge commented that there was an arguable case both for and against infringement but declined to take into account the relative strengths of the parties' cases in reaching his decision. The other factors, discussed above, weighed too heavily in favour of BASF and so it was not appropriate to consider the relative strengths of the arguments for and against infringement. This aspect of the decision will be welcomed by holders of process patents as it highlights their potential injunctive value notwithstanding their inherent weakness arising from the difficulties with definitively proving infringement of process claims.

Other factors

Another factor in favour of BASF was the risk of an irreversible price drop occurring if the injunction was not granted, as a result of the inevitable competition on price with Sipcam's Most Micro product. This is an argument often seen in disputes in the pharmaceutical sector and here the judge agreed with BASF that the loss of revenue that might result from this price drop if the injunction was not granted would outweigh any loss in sales that Sipcam may incur as a result of the injunction being granted.

However, the decision is not all positive news for patentees. In particular, BASF's argument that Sipcam should have expected litigation and tried to "clear the way" by bringing invalidity or declaration of non-infringement proceedings before launching its product, was specifically rejected by the judge. Unusually, Sipcam was already selling Most Micro in Italy, a state covered by the Italian designation of the European patent in question and BASF had not brought infringement proceedings in Italy. Given this background the judge concluded that it was not fair to say that Sipcam should have expected infringement proceedings in the UK and the usual considerations about the potential infringer trying to clear the way did not apply in this case. Although this aspect was not determinative to the outcome in this case, the lesson for patentees is clear. If you acquiesce to potential infringements of your European patents in one jurisdiction then this may count against you when the patent is litigated in other European jurisdictions.


The decision provides a number of practice points for parties involved in UK litigation. Firstly, the importance of cooperation is evident from the judge's comment that the obvious way to resolve the dispute would be for Sipcam to agree to an unfettered inspection of its process. The reasons for Sipcam's refusal of requests for inspection were not made clear. However, the conduct of the parties, rather than the strengths of their cases for and against infringement, was considered to be the crucial factor in granting the injunction. Therefore, would-be defendants in a similar position should weigh the potential downsides to allowing inspection of their commercial processes against the potential benefits later during litigation of their cooperation with would-be claimants. Secondly, the UK courts evidently take a dim view of parties going back on undertakings given in pre-trial correspondence and Sipcam's case was weakened considerably by the orders and sales it made in July and August, despite it indicating that it would wait until the autumn to launch its product. Finally, it is important to note that the ultimate issue of infringement is still undecided, the judge noting "I do not think it would be easy to say who has a stronger case". Accordingly, difficulties in proving infringement are not necessarily a bar to patentees seeking to rely on process patents for injunctive relief pending full trial in the UK.

Need advice?

Carpmaels & Ransford LLP is a leading firm of European patent and trade mark attorneys based in London. For more information about our firm and our practice, please visit our website at

This Briefing Note was first published in the IAM IP Newsletter.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.