The UPC's approach to preliminary injunctions
The UPC opened its doors for business just over a year ago. From a patentee perspective, one of the attractions of the new Court was the ability for patentees to obtain preliminary injunctions that covered all the UPC participating member states, including key strongets such as
There was much speculation in the lead up to the start of the UPC as to whether the UPC would adopt a pro-patentee approach, reflected in the wide-spread granting of preliminary injunctions, or take a more conservative approach.
The decisions so far, most of which have been heard in the German Local Divisions, confirm that the preliminary injunction is, indeed, a powerful tool for patentees at the UPC. However, it is also clear that at both first instance and appeal, the UPC will review the evidence and arguments in detail on a case-by-case basis. This has led to a fairly balanced approach requiring the patentee to bring a strong claim with the necessary supporting evidence.
This article explores three of the practical issues that have been considered by the UPC in the first 12 months.
1) Validity and infringement
The UPC will routinely look at the issues of validity and infringement in significant detail. This is demonstrated in a number of the preliminary injunction decisions we have seen to date.
The standard was set in 10x
Sufficient certainty
One of the issues addressed in the decision was the requirement imposed by Article 62(4) UPC Agreement and Rule 211(2) Rules of Procedure, that there must be "sufficient certainty" that the patent in suit is valid and infringed.
When considering the meaning of "sufficient certainty", the Court considered that a preliminary injunction application was a provisional (as opposed to final) remedy which had only limited discovery requirements. It, therefore, followed that the standard of likelihood must be lowered and, therefore, a "likelihood bordering on certainty cannot be demanded". In practice, this means that it must be more probable than not that the patent in suit is valid and infringed.
It is noteworthy that on appeal, the
Permitted scope of an invalidity challenge
In the recent case of
In relation to the permitted scope of an invalidity challenge, the Court confirmed that the limit was the three strongest invalidity attacks only.
This may be challenging for respondents in the future and it will be interesting to see whether subsequent decisions follow suit.
2) The timing of the preliminary injunction application and delay
The UPC will assess whether an application for a preliminary injunction has been made in a timely manner, to ensure that there has not been an "unreasonable delay", pursuant to Rule 211(4) of the Rules of Procedure.
What amounts to an "unreasonable delay" has now been considered a number of times by the UPC.
For instance, in the
myStromer AG v Revolut Zycling
In myStromer AG v Revolut Zycling3, the Dusseldorf Local Division issued the decision on
As the patentee, myStromer's assertions of urgency were based on the fact that Revolut Zycling was showing the infringing bike at the famous Eurobike 2023 trade show in
The case of
However, the most specific guidance on this issue has been provided in the
In relation to the question of delay, the Court held that if the applicant files the preliminary injunction within two months of becoming aware of the allegedly infringing products - to allow for investigation and infringement/validity analysis - then this should support a finding that there has not been an unreasonable delay.
Of course, this decision does not mean that an application that is made after two months will automatically fail, but it does provide a good practical steer for how the UPC looks at this issue. It seems likely that persuasive reasons will need to be shown why a delay of more than two months is reasonable.
3) Use of the prosecution history in preliminary injunction applications
In the first instance decision of
Of particular interest, and some surprise, the Court allowed the consideration of the prosecution history of the patent in suit to construe the granted claims.
Subsequently, the
However, this issue was also considered in the
Whilst the Court did not criticise the Munich Local Division in the VusionGroup case referred to above, it certainly did not endorse it.
Conclusion
Overall, the decisions so far on preliminary injunctions are positive for patentees because there is a clear message from the UPC that preliminary injunctions will be granted in appropriate circumstances. However, the decisions also clearly demonstrate that the Court is not overtly pro-patentee and will only grant a preliminary injunction after careful consideration on the facts and evidence when it is just and appropriate to do so.
In most cases, the UPC is willing to delve into the detail and this clarifies the importance for patentees to ensure that they present their case in the most robust way possible to ensure the best chance of prevailing.
Footnotes
1 UPC_CFI_ 2/2023
2 UPC_CFI_443/2023
3 UPC_CFI_177/2023
4 UPC_CFI_292/2023
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.
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