In many jurisdictions provisional measures, in particular preliminary injunctions (PI) are an effective and popular instrument for enforcing patent claims. Before the upcoming UPC it will also be possible to apply for and obtain a preliminary injunction. In the following we want to summarise what we can take from the UPC Agreement (UPCA) and the draft Rules of Procedure of the UPC (RoP) about preliminary injunctions before the UPC. We will also point out which questions currently still remain unclear – ie regarding to which the UPC court practice has to be awaited.

Similar to national jurisdictions it is possible to apply for provisional measures before the UPC. According to Art. 32 (1) UPCA, the UPC is exclusively competent in respect of all actions and counterclaims listed in the exhaustive catalogue, which explicitly includes “actions for provisional and protective measures and injunctions”.

The UPCA provides the following provisional measures to be issued by the UPC:

• Provisional measures to preserve evidence and inspection of premises (Art. 60.1 and Art. 60.3 UPCA).
• Order to produce evidence (Art. 59 UPCA).
• “Freezing orders” – order a party not to remove any assets from the UPC’s jurisdiction (Art. 61.1 UPCA).
• Injunction against the alleged infringer or an intermediary under threat of periodic penalty payments or order that the continuation of the infringement may only take place against the provision of a security intended to ensure compensation to the right holder. (Art. 62.1 UPCA).
• Seizure or surrender of products suspected of infringing a patent, as well as the precautionary seizure of movable or immovable property of the alleged infringer, including the freezing of bank accounts (Art. 62.3 UPCA).

The specifics of provisional measures are subject to Rules 205 - 213 RoP (18^th draft version). The jurisdiction where provisional measures can be lodged depends on whether main proceedings on the same matter are already pending or not. If so, the same chamber dealing with the main proceedings shall have exclusive jurisdiction to hear the application for interim measures. If a main action is not pending (yet), the applicant may choose a competent court in accordance with the general rules, so either the local chamber, regional chamber or the central division.

Although the court fees for a preliminary injunction request are relatively low with a lump-sum fee of only 11,000 EUR per application, the rules regarding reimbursement of the other parties’ attorney’s fees still apply and may increase the overall cost risk substantially, depending on the individual value in dispute.

Apart from general particulars, an application for provisional measures shall contain, designation of the requested provisional measure(s), the reasons why provisional measures are necessary to prevent a threatened infringement, to forbid the continuation of an alleged infringement or to make such continuation subject to the lodging of guarantees, the facts and evidence relied on in support of the application, including evidence to support the claim that provisional measures are necessary, and a concise description of the action which will be started before the court, including an indication of the facts and evidence which will be relied on in support of the main proceedings on the merits of the case.

With regard to the substantive requirements for the issuance of an interim injunction, Art. 62 UPCA merely requires that “a threatened violation must be prevented”.

Before granting an injunction, the court shall weigh up the interests of the parties, taking into account in particular the possible damage that could result to one of the parties from the granting or the rejection of the injunction. The court may require the applicant to establish that they are entitled to commence proceedings, that the patent is legally valid and that the patent is infringed or threatened with infringement.

The urgency of the matter, however, is not defined as such as a positive condition for the grant of an interim injunction. The legal framework merely states, as a negative delimitation, that the court must take into account any unreasonable delay in applying for an interim injunction. However, the absence of undue delay does not automatically mean that there is urgency. It could be argued that the mandatory balancing of interests suggests that an interim injunction can only be granted if it is urgent in order to prevent irreparable damage to the applicant because of the significant consequences for the defendant’s business. Nevertheless, this is a question regarding to which the court practice of the Unified Patent Court remains to be seen.

In order to substantiate the allegation of infringement, the applicant must already set out all facts and evidence in the PI application. Although the court has to take into account the validity of the patent, in particular whether it was maintained in opposition proceedings before the EPO or whether other national proceedings were pending, the RoP leave open to what extent the requirement of “reasonable proof that the patent is legally valid” shall be satisfied. In exercising its discretion, the court has to weigh the legal and economic disadvantages and damages threatening the right holder in case the preliminary injunction is being unlawfully refused (e.g. in case it subsequently turns out that it should have been granted), against the legal and economic disadvantages and damages threatening the defendant in case the preliminary injunction is being unlawfully granted, e.g. because the patent subsequently turns out not to have been infringed or is declared invalid.

An ex parte (without the parties present) provisional measure, as it is known e.g. from PI proceedings in Germany, will be possible – however, only under exceptional circumstances. 

In case the applicant requests the issuance of provisional measures without hearing the defendant, the application shall additionally – apart from the abovementioned requirements – contain:

• the reasons for not hearing the defendant; and
• information about any prior correspondence between the parties concerning the alleged infringement.

The applicant is obliged to communicate to the court all relevant facts known to him which are likely to influence the court’s decision whether or not to hear the defendant. As relevant information in this regard the RoP explicitly mentions any pending proceedings and/or any unsuccessful attempt in the past to obtain a preliminary injunction in respect of the same patent.

It is under the court’s discretion to decide whether to inform the defendant of the application and give them the opportunity to lodge an objection or to directly summon both parties to an oral hearing or even to summon only the applicant to an oral hearing. In exercising its discretion, the court shall in particular take into account whether the patent has been upheld in an opposition procedure before the EPO or has been subject to other court proceedings, the urgency of the action, whether the applicant has requested a provisional measure ex parte (without hearing the defendant) and whether the reasons presented for this appear well-founded, and any protective letter filed by the defendant.

Particularly in case a protective letter has been filed by the defendant, the court shall consider an oral hearing with both parties. Rule 212 (1) RoP explicitly stipulates that the court may order ex parte provisional measures in particular where any delay caused by a contradictory debate is likely to cause irreparable damage to the applicant or where there is a demonstrable risk of evidence being destroyed.

In summary, the issuance of an ex parte provisional measure appears to be subject to exceptional circumstances. However, the interpretation of the used terms (e.g. “irreparable damages”, Rule 212 (1) RoP) remains unclear. Also the term “in particular” indicates that the issuance of such ex parte injunction is not limited to the explicitly mentioned scenarios.

Finally, it remains to be seen how the UPC practice in this regard will develop and how the respective terms will be interpreted by the UPC judges.

The preliminary injunction is subject to appeal. The time limit to appeal is 15 days after the service of the interim measure on the defendant. An appeal against the interim injunction does not prevent the continuation of parallel proceedings on the merits as such, but the court of first instance shall not give a decision on the merits of the case until the court of appeal has decided on the preliminary injunction appeal.

In the case of the revocation of provisional measures or where it subsequently turns out that there has been no infringement, the court may order the applicant (upon request) to provide the defendant with appropriate compensation for damages caused by the provisional measures.

The territorial scope of a preliminary injunction depends on which kind of patent has been infringed.

As far as the already known European Patent (EP) is concerned, the effect of a preliminary injunction only extends to such UPC member states where the respective national part of the EP is (still) in force. On the other hand, the effect of preliminary injunctions regarding to a new Unitary Patent (“UP”) extends to the territory of all UPC member states at the time the patent is granted. 

Conclusion

In summary, provisional measures, in particular the preliminary injunction are expected to be a popular and effective means for patent rights enforcement also before the UPC. Especially the territorial scope of effect of a preliminary injunction issued for a UP infringement will play an important role in future corporate decisions relating to IP strategy.

The main framework of the procedure regarding provisional measures is already set out in the UPCA and RoP – however, as outlined above, specific questions and requirements are not yet entirely clear. Therefore, it is to be awaited whether and how a particular “UPC practice” will turn out to develop.

Compared to the national law, further interesting aspects of provisional measures under the current (18^th) draft of the RoP are ex parte oral hearings (ie without participation of the defendant) and the option to withdraw a non-successful application by asking the court to keep it confidential. Based on the final and binding version of the RoP, which have not yet been issued, and depending on whether the regulations on these regards will be confirmed, we will follow-up with a separate issue dealing with the relevant strategic implications.

In any case, one thing is clear: provisional measures – especially the preliminary injunction – will constitute an important means in order to enforce injunctions beyond national borders. Therefore, it is strongly recommended to be prepared for the upcoming UPC and everything that goes with it. Also from a defensive point of view it may be necessary for enterprises to take preparational measures. In any case, an individual and professional assessment is essential in order to find out what actions are necessary to be ideally prepared for the new UPC. Our Taylor Wessing experts are happy to advise you!