Clarification and Adjustment at the Court of Appeal of the UPC– Ireland is not (yet) a Contracting State of the UPC

Recent Developments in the Unified Patent Court Appeal

On August 19, 2024, the Court of Appeal of the Unified Patent Court issued an order regarding an application for suspensive effect related to a patent dispute involving Sibio Technology Limited, Umedwings Netherlands B.V., and Abbott Diabetes Care Inc.

Key Aspects of the Court’s Decision

The appeal, primarily centered around Abbott’s application for provisional measures, raised critical questions about the extent of jurisdiction and enforcement capabilities of the UPC, particularly involving Ireland—a signatory that has yet to ratify the UPCA. This situation brought to light the challenges and complexities of enforcing patent rights across different member states within the EU.

The Court of Appeal’s decision to grant suspensive effect insofar as the impugned order extends to the territory of Ireland was expected by many. The court recognized that the enforcement of such an order in Ireland was "manifestly erroneous" given Ireland’s status concerning the UPCA. This decision not only rectified a jurisdictional misapplication but also reinforced the importance of precise legal documentation and claims within UPC proceedings.

On the other hand, the court denied suspensive effect regarding the remainder of the territory covered by the order, indicating a balanced approach to enforcement and the appeal's considerations. This part of the decision emphasized that the appeal did not demonstrate sufficiently urgent or compelling reasons to outweigh the interests of the patent holder, Abbott, highlighting the need for a strong justification for suspensive effect beyond mere legal or factual disagreement with the first instance ruling.

Key takeaways

• The Court of Appeal corrected a crucial error by ruling that Ireland, not having ratified the UPCA, i.e. not being a Contracting member state of the UPC, should not be included under the enforcement jurisdiction of a patent injunction.
• The appeal to suspend the enforcement of the injunction was denied for territories other than Ireland, underscoring the limited options for suspensive effects.