In 2018, the Istanbul IP Court decided on a generic pharmaceutical company’s damages claim based on an unjust PI, in what appears to be the first decision of its kind by the Turkish IP Courts within the pharmaceutical sector. The dispute between an originator firm and a generic firm derived from an infringement claim. The Court had issued a PI, which was lifted after 13 months based on the findings of an expert’s report, which found that no infringement had been made. The generic company then filed a compensation action for damages due to the fact that it had not been able to launch the generic product. The patent holder argued that in order to calculate the hypothetical market share of the generic company, the Court should compare other similar products across various markets. The experts calculated the market share based on a comparison of in-market sales data for similar product markets.
A second case that was similar in kind was recently decided and, as the generic pharmaceutical company started selling the product in question after the PI was lifted, the basis of the damages calculations were that the IMS data related to the term after the PI had been lifted. However, the most difficult part was the determination of the profit margin of the claimant generic pharmaceutical company.
A ‘one size fits all’ approach for the calculation of damages is inappropriate for this kind of action since case-specific parameters must be considered. Both decisions are first instance court decisions, subject to appeal by the parties of the case.
In these damages actions due to unjust PI, the unconstitutionality of the claims is also a point of discussion due to the poor wording of the relevant provision of the Civil Procedural Law. Procedurally, a lower degree of proof is sufficient for the Court to issue a PI decision. However, Article 399 of the Civil Procedural Law provides that the party who was granted the PI shall be obliged to compensate the other party for damages in the event that the PI is lifted. According to this law provision, the person who exercises the right to request a preliminary injunction, within the framework of legal rules and protection afforded to him/her, is held liable for compensation, without examination of fault or bad faith. Therefore, the requesting party, at the beginning of the trial, is imposed with the obligation to predict the final decision, to be established by the Court.