The Unified Patent Court (UPC) provides patent owners with a wide range of effective remedies in case of patent infringement, including the possibility to obtain preliminary injunctions (PI), or 'provisional measures', under Article 62 UPC Agreement.
Two years on from the start of the UPC, its decisions have already shaped many of the principles governing the grant of preliminary injunctions, in particular those relating to the standard of validity that should be applied by the court. There is no doubt that the UPC will look closely at the arguments presented by both parties, including in relation to the validity of the patent at stake. In view of this as well as the front-loaded nature of the proceedings and its short deadlines, parties should be extremely well prepared for UPC proceedings.
Two years after the start of the UPC it is clear that this court has become an important forum for patent owners anywhere in the world across many sectors, including life sciences. The possibility to obtain preliminary injunctions covering up to 18 participating member states within a few months makes it an attractive forum for patent owners. This is confirmed by the many decisions rendered in PI cases by the UPC to date and this number is only expected to increase.
The attractiveness of the UPC as a forum to enforce patents does not mean however that (potential) defendants should despair. Preliminary injunctions are not routinely granted and the UPC clearly makes an effort to render fair and balanced decisions, also taking into account the invalidity arguments raised by defendants. An application for a PI which is contested will, therefore, result in a mini trial on the merits of the case.
UPC requirements for preliminary injunctions
Article 62 of the UPC Agreement, as substantiated by Rule 211 of the UPC’s Rules of Procedure, provides for the criteria that the UPC can consider when assessing applications for preliminary injunctions. In short, the applicant should provide reasonable evidence that:
- The applicant is entitled to commence proceedings
- The patent in question is valid
- There is an (at least imminent) infringement.
In taking its decision, the court must furthermore weigh up the interests of the parties and, in particular, take into account the potential for harm for either party arising out of the grant or refusal of the preliminary injunction. It must also have regard to any unreasonable delay by the applicant in seeking the preliminary injunction (urgency requirement).
Several decisions have clarified the conditions to obtain a PI. From these decisions, the following principles emerge:
- The burden of presentation and proof of the (imminent) infringement lies with the applicant, who should establish that it is 'more likely than not' that the patent is infringed.
- The burden of presentation and proof of the invalidity of the patent in question lies with the defendant, who should establish that 'on the balance of probabilities' it is 'more likely than not' that the patent is not valid.
- The fact that the patent was granted is not sufficient per se for a grant of a PI and the UPC will itself evaluate whether the patent is more likely valid or not. There is no absolute presumption of validity.
- Expert opinions provided by any party may be considered by the court and could be a very important evidence in PI proceedings.
- There are no deadlines as such for filing an application for a PI: the question whether there is unreasonable delay depends on the specific circumstances of the case. It should be assessed whether, in view of these circumstances, the applicant’s conduct as a whole justifies the conclusion that the enforcement of its rights is not urgent.
- When assessing urgency, the court will also take into account the front loaded nature of the proceedings, which requires appropriate preparation.
- The UPC is, in principle, also willing to consider a granting of ex parte preliminary injunctions in situations where hearing the other side is likely to cause irreparable harm to the applicant or where there is a demonstrable risk of evidence being destroyed or otherwise ceasing to be available. In extremely urgent situations, the standing judge of the UPC may order an ex parte PI. There have been cases where the UPC ordered a PI just a few hours after the request was filed.
- In PI appeal proceedings, the losing party has just 15 days to file an appeal, and the reply to the appeal has to be filed within another 15 days which can be quite a challenge, particularly in big cases.
From a potential applicant´s point of view the following conclusions can be drawn from the case law up to now:
- The application for provisional measures should contain as much information as possible on the alleged infringement. PI proceedings are, as with main infringement proceedings, front-loaded. There may, or may not, be a second round of written submissions before the oral hearing; however, even if there is such second round, the courts may dismiss evidence that could already have been brought in the application for provisional measures.
- In view of the urgency requirement, the applicant should not lose any time when preparing for PI proceedings. The applicant should therefore balance the front-loaded nature of the UPC proceedings in general with the urgency requirement of PI proceedings. Taking too much time to prepare for the proceedings may result in a refusal of the requested PI for lack of urgency.
- The importance of the hearing in PI proceedings should not be underestimated. All parties should be extremely well prepared when it comes to the oral hearing. Although usually not very long (a half to a full day) in a 'mini trial' format, the court expects that both sides present their arguments in depth and are able to deal with very detailed questions even when not discussed as such in the written submissions.
From a defendant´s point of view the following conclusions can be drawn from what we have seen in PI proceedings before the UPC so far:
- Given the willingness in principle to grant ex parte preliminary injunctions, protective letters (as provided in Rule 207 in the UPC’s Rules of Procedure) may play an important role and should be submitted if a party sees the danger that infringement proceedings may be initiated.
- However, as can be seen from the UPC case law so far, a protective letter – if not convincing – may be detrimental as the court may think 'if this is the best the defendant can argue, then we will grant the PI'. Therefore, any protective letter to be filed should contain a strong and convincing argument.
- Apart from a protective letter, a party should prepare for PI proceedings if there is a danger that such proceedings will be initiated. The speed of these proceedings is very high and the court is very hesitant to grant any delays for filing submissions. It may well be that it will only take about three months from filing of the PI request until a decision is made. The defendant should in any case expect short reply deadlines; the court is free to set a deadline it considers as appropriate.
- The defendant should also take into account the front-loaded nature of the proceedings: if there is a second round for submissions, the courts may dismiss evidence that the defendant could have brought in the first written submission.
- As with the plaintiff´s representative, the defendant´s representative should also be extremely well prepared when it comes to the oral hearing in inter partes PI proceedings.
Conclusion
The UPC has established itself as an attractive forum for patent owners to enforce their patents thanks to the real possibility to obtain a PI. To obtain such PI patent owners should act swiftly, taking into account the circumstances of the case as well as the front-loaded nature of the proceedings which require some preparation.
When assessing the application for a PI, the UPC will carefully consider the alleged infringement and the validity of the patent in question. An applicant can thus not simply rely on a presumption of validity: if the defendant has strong invalidity arguments, these may result in the refusal of the requested PI.
Overall, it is good to note for both applicants and defendants that the UPC judges appear to be taking a very balanced approach and are making an effort to deliver fair and balanced decisions, regardless of their geographical location.
