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Case note

Merck Sharp & Dohme Corporation & Anr. v. Glenmark Pharmaceuticals Ltd.

The question before the court

Whether an interim injunction should have been refused to the holder of a patent on a diabetes compound whose salt form a generic maker was selling.

Citation under confirmation. We have not yet matched this citation to an official law report, so the citation line is provisional. The substance of the note is drawn from the judgment. Verified against: WIPO Lex record for the High Court of Delhi confirming the case number FAO(OS) 190/2013; citation 2015 SCC OnLine Del 8227 from the WIPO guide to patent case management for judges, chapter on India; date of 20 March 2015 taken from a judgment listing and a contemporaneous news report published 21 March 2015. Note: the WIPO Lex date field for this record reads 20 May 2015, which conflicts with those sources, so the date is flagged for review..

What the court held

The Division Bench reversed the refusal and restrained the generic maker pending trial. It took the view that a patent claiming a compound together with its pharmaceutically acceptable salts is not sidestepped by marketing a salt of that compound, so a prima facie case of infringement was shown. The challenge to validity was not thought strong enough at that stage to displace a granted patent. The balance of convenience was weighed on the footing that loss to the patentee would be difficult to measure later.

Why it matters to a reader of this provision

Interim injunctions settle the practical outcome of most Indian pharmaceutical patent disputes, and this is one of the most cited appellate treatments of when one should issue. It deals with how far a compound claim reaches over salt forms, and with how a court weighs a validity challenge against a granted patent before trial. Those are the first questions readers of sections 48 and 108 face.

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Provisions this judgment interprets

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Does this judgment affect your matter?

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