According to Art. 62 of the Agreement on the Unified Patent Court (UPCA), a Patentee may apply for a preliminary injunction (PI) before the UPC, where a European patent is infringed in at least one of the participating Member States, or where such infringement is imminent.
Under Art. 62(2) UPCA, the grant of a PI will be subject to the discretion of the Court, which will have to weigh up the interests and risks of each of the parties that may potentially result from the granting or the refusal of a PI.
According to the Rules of Procedure of the Unified Patent Court (R.), the Court shall take due account of the urgency of the case when deciding on the application. The ‘urgency’ of the case can refer to the harm the Patentee will face, should no preliminary measure be granted prior to a judgement in the proceedings on the merits. Such harm may include an irreversible price collapse or the exclusion from competition. Further, one may imagine cases where the patent-in-suit is close to lapse in the near future, so that the Patentee cannot wait to obtain an injunction in main proceedings. Of course, this list of urgent matters is not exhaustive. It is likely that different Local Divisions of the UPC will establish other instances of urgency, maybe adding their own local flavour when exercising their discretion under Art. 62(2) UPCA.
It is as yet unclear whether “urgency” also involves a timing aspect. In fact, R. 209.3 mentions cases of “extreme urgency”, which speaks in favour of a timing aspect. It remains to be seen if the divisions of the UPC will establish certain time frames within which a PI application must be brought after knowledge of the infringement, thus mirroring many courts of Member States in national proceedings. Again, Local Divisions may take different approaches here, at least during the early stages of this new system.
According to R. 209.2: when weighing up the involved interests and risks, the validity of the patent shall be taken into account. The Rules of Procedure do not spell out which standards will apply in assessing the patent’s validity in PI proceedings. While the infringement courts of some Member States are hesitant to grant PIs based on patents which have not yet proven to be valid in opposition or validity proceedings, the UPC may well apply a different test. In the recent decision Phoenix Contact/Harting (Case C-44/21, para. 41), the CJEU held that the validity of a patent is to be assumed once it is granted, irrespective of whether the patent is asserted in preliminary proceedings or proceedings on the merits. With this in mind, the UPC, which has to follow the CJEU’s case law, may develop a balanced test, in which the Patentee needs to establish that the patent is likely to survive validity proceedings, if and to the extent the Respondent has actually attacked the patent’s validity in order to rebut the assumption of validity.
Here again, the Local Divisions may establish their own take on this, at least in the early phase of the new system, with some Local Divisions likely providing lower thresholds to establish validity than others. However, in order to rebut the presumption of validity, the Respondent will very likely be forced to file an opposition or a revocation action, if they want validity challenges to be heard.
It is interesting to note in this regard that the Rules of Procedure do not foresee the involvement of a technically trained judge in PI proceedings. It is therefore advisable that Patentees and Defendants alike expressly request the involvement of a technically trained judge in their submissions.
PI applications may be filed even before proceedings on the merits are pending. In the initial phase, a single judge of the Local Division will handle the application and has all necessary powers to decide the case alone, R. 208.4.
A PI application will be considered “filed” only after the applicable court fees per R.370.4 have been paid. A proof of payment shall be added to the application.
Art. 60(4) UPCA and R. 212.1 provide for a grant of ex parte PIs. However, given that the Defendant’s right to be heard is a fundamental procedural right, the grant of ex parte PIs will likely be limited to exceptional cases, where the Patentee can proove irreparable harm to its business should the Respondent be heard beforehand. In principle, Member States’ courts grant provisional measures ex parte only where there is a risk that pertinent evidence may be destroyed or taken away, if the Respondent were to be informed about the action beforehand. Also here, tests and standards for ex parte PIs are likely to develop over time.
Absent such exceptional circumstances, it can be expected that an Oral Hearing will be scheduled “as soon as possible” as per R. 210.1. It is yet unclear, if this will always mean an in-person hearing, as the Judge has discretion to set up a video conference in order to expedite proceedings.
In case the single Judge refuses to grant the PI without giving the Respondent the opportunity to comment, or in case the Respondent has filed a Protective Letter, the Rules (R. 209.4/5) provide that the Patentee shall be informed accordingly. The Patentee may then elect to withdraw its PI application and request that the PI application be kept confidential and not be forwarded to the Respondent. Hence, the Patentee may try to obtain a PI without the risk of the Defendant being notified about such an application.
Pursuant to Art. 62(4) UPCA, the Patentee shall provide “reasonable evidence” and establish a “sufficient degree of certainty” in PI proceedings that the patent is valid and infringed. It remains to be seen if this level of proof will be the same or lower than the level applicable to the proceedings on the merits. In any case, written statements and affidavits of parties’ representatives, witnesses and experts will likely play a major role in PI proceedings.
According to R. 211, the court may order the following:
- interim injunction
- seizure and delivery up of goods suspected of infringement
- precautionary seizure of bank accounts and other assets of the Defendant
- interim award of costs
Under R. 211.5, the Court can decide to make the enforcement of a PI subject to an adequate security for compensating any injury likely to be caused to the Respondent in case the PI is lifted on Appeal. It is to be expected that the Court will take the value of the case, and the potential damages that are to be established by the Respondent, into account when fixing the security amount.
Any granted PI measure will be subject to an Appeal according to Art. 73 UPCA, R. 220.1, such an Appeal must be filed with the Court of Appeal within 15 days of service of the PI. What is more, under R. 213.1, the successful Patentee is required to bring an action for patent infringement on the merits within 20 days from grant of the PI, in the case that main proceedings are not already pending.
Companies that receive a warning letter based on a European Patent or that otherwise fear becoming the subject of a preliminary injunction from the UPC, may file a Protective Letter with the Court, as provided for in R. 207. A Protective Letter is a pre-emptive response to an expected PI application, and may set out arguments of defence, such as, lack of jurisdiction of the UPC (due to opt-out), arguments of non-infringement, and arguments of invalidity of the patent-in-suit.
A Protective Letter, which shall be filed in the language of the patent (R. 207.2), will be kept at the Registry of the UPC and will automatically be forwarded to the competent Judge, once a PI application has been received by the Court.
As the Court must take a Protective Letter into consideration when deciding over the further procedure (R.209.4), the measure can help to avoid an ex parte grant of a PI without the Respondent being heard. Instead, a Protective Letter will very likely lead to an Oral Hearing being scheduled, if the Patentee does not decide to withdraw the application in light of the Protective Letter, cf. R. 209.5.
Otherwise, Protective Letters in the Registry will not be publically available, R. 207.7. If no PI application is filed, the Protective Letter will automatically be deleted by the Registry, R. 207.9 (but may be re-filed to continue protection).
With Protective Letters, the system therefore provides companies with a means to influence PI proceedings at an early stage. However, in order to be able to use Protective Letters in an efficient manner, companies should make sure to frequently monitor the development of their competitors’ portfolios and conduct freedom to operate analyses with respect to their most relevant products and services to assess their risk of becoming subject to actions and PI applications at the UPC.
