Summary
In the case of Boehringer Ingelheim v. Femilab Healthcare, the Himachal Pradesh High Court ruled that interim injunctions granted to prevent patent infringement cannot continue after the patent has expired. The court held that such relief loses effect with the end of the patent term. However, it stated that infringing products made during the patent’s validity may still be restrained from being sold or used after the patent expires.
Background
Patent Infringement Dispute
The plaintiffs, Boehringer Ingelheim, held Indian Patent No. 268846 for the compound Empagliflozin, granted on 18 September 2015. They filed a suit claiming that Femilab Healthcare was infringing their patent by launching products containing Empagliflozin. An interim injunction was granted to prevent infringement during the pendency of the suit.
The patent expired on 11 March 2025, but, the plaintiffs sought continuation of the interim relief, arguing that the infringing activities occurred during the patent term and that the defendants should not benefit post-expiry.
Questions Before the Court
- Can an interim injunction granted during the patent term continue after the patent has expired?
- Can a court restrain sale or marketing of infringing products made during the patent term even after its expiry?
Arguments Presented By the Parties
Plaintiffs’ Arguments
- The defendants infringed the patent while it was valid.
- Interim protection should continue post-expiry to prevent the infringer from benefitting by selling products made during the patent term.
- In Sotefin SA v. Indraprastha Cancer Society, the Delhi High Court allowed such post-expiry restraints.
Defendants’ Arguments
- Once the patent expires, exclusive rights under Section 48 of the Patents Act cease to exist.
- In Novartis AG v. Natco Pharma Ltd., the Supreme Court held that interim orders “work themselves out” upon patent expiry.
- In Kabushiki Kaisha Toyota Jidoshokki v. LMW Ltd., post-expiry injunction was denied.
Injunctions After Patent Expiry
The court stated that under Indian law, patent rights end with expiry of the patent term. As per the court, once the patent expires, an interim injunction cannot be continued. It explained that the purpose of an interim injunction is to protect the patentee’s exclusive rights during the patent term. After expiry, those rights no longer exist under Section 48 of the Patents Act.
The court discussed the Supreme Court’s decision in Novartis AG v. Natco Pharma Ltd., where the injunction granted during the patent term was found to have no effect post-expiry. In the said case, the Supreme Court had set aside both the Single Judge’s and the Division Bench’s orders, stating they had no practical relevance after patent expiry.
The court also acknowledged the reasoning in Sotefin SA v. Indraprastha Cancer Society, where the Delhi High Court allowed the patentee to restrain sale of infringing goods made during the patent term. While the Himachal Pradesh High Court agreed that such goods remain infringing, it held that an interim injunction as a general relief cannot continue beyond the life of the patent.
As per the court, the appropriate remedy in such cases is to restrain the sale or marketing of infringing goods manufactured during the patent term, rather than extending an interim injunction meant to protect rights that no longer exist.
Findings
The court vacated the interim injunction as the patent had expired. However, it directed that the defendant must not commercially use any infringing products manufactured during the patent term, unless permitted by the court.
Relevant Paras
Para 10: “The purpose of granting interim relief…stands satisfied and the interim cannot be allowed to continue thereafter.”
Para 12: “[The] injunction…granted in such proceedings in favour of a Patent Holder works itself out with the expiry of the Patent.”
Para 15: “The infringement that has occurred during the lifetime of the Patent cannot fade away…the infringer cannot take the benefit…after the expiry of the Patent by restraining the infringer from marketing or selling the product…”
Case Citation
Boehringer Ingelheim International GmbH & Anr. v. Femilab Healthcare & Anr., OMP No.1085 of 2024 in COMS No.24 of 2024, decided by the Himachal Pradesh High Court on 29 August 2025.
https://indiankanoon.org/doc/48429914/ (Visited on 5 September 2025)
Disclaimer
This case blog is based on the author’s understanding of the judgment. Understandings and opinions of others may differ. An AI application was used to generate parts of this case blog. Views are personal.
