Key Points on Interim Measures in Appeals
In an order of September 25, 2024, the Appeals Court of the Unified Patent Court (UPC) articulated vital principles regarding the handling of appeals in the context of interim measures.
Likelihood of Patent Validity
The Unified Patent Court's Appeals Court confirmed the validity of claims 1 and 13 of a patent, notably emphasizing the absence of any "pointer" or "incentive" in the prior art to guide a skilled person towards the invention. This approach to assessing inventive step is of course a known concept but the court's articulation signals its importance. For example, Reason No. 195 notes, "Starting from EP 679, a skilled person had no incentive ('Anlass' in the original German) to..."; Reason No. 196 states, "From WO 721, it is not apparent that a skilled person would have an incentive ('Anlass') to..."; Reason No. 200 comments, "Starting from EP 011, the skilled person had no motivation ('Veranlassung')..."; and Reason No. 203 adds, "Such an incentive ('Anregung') also does not arise from the expert's knowledge...".
Admissibility of New Arguments
Significantly, the Appeals Court exercised its discretion to admit arguments relating to EP 1 577 679, previously not admitted in first-instance proceedings due to their late submission. The court emphasized the importance of a fair trial and the right to a full hearing as part of its rationale.
Legal documents submitted after the conclusion of oral hearings
Documents submitted after the conclusion of oral hearings cannot be considered by the court when making a decision. According to Rules 195.3, 197.1 sentence 2, and 212.3 RoP, the decision should be issued as soon as possible after the oral proceedings end. This implies that the decision must be based solely on the written and oral submissions made before the end of the last oral hearing.
Time frame for requesting a Preliminary Injunction (PI)
Time frame for requesting a Preliminary Injunction (PI)begins from the day the claimant becomes aware, or should have become aware, of the infringement such that a successful application for preliminary measures could be made, as per Rule 206.2. The crucial factor is when the claimant actually had, or should have had with due diligence, the necessary facts and evidence as required by Rule 206.2d. This means the claimant is expected to file for preliminary measures as soon as they reasonably have enough information to form a basis for such a claim, emphasizing the necessity of prompt legal action to prevent undue delay in legal proceedings.
Irreversible damage not a prerequisite for granting preliminary injunctions
The CoA's decision emphasizes that irreversible damage is not a prerequisite for granting preliminary injunctions. Citing the European Court of Justice's ruling in Phoenix/Harting (ECLI:EU:C:2022:309), the CoA clarifies that Article 62(2) UPCA and Rule 211.3 only require consideration of potential damage when balancing interests. Furthermore, Rule 212.1, which permits ex-parte orders, suggests that such measures may be necessary especially when delays could likely cause irreparable harm. The court asserts that the interests of the patent holder in securing preliminary measures must outweigh those of the alleged infringer. The fact that the order was issued ex-parte on December 11, 2023, is considered appropriate given the circumstances.
Key take aways
