IP Quick Tip: The practical relevance of preliminary injunctions at the UPC

10/25/22 • 4 min

To register for our webinar IP Experts LIVE on the sunrise period of the UPC, please visit: https://www.bardehle.com/en/ip-news-knowledge/ip-events/detail/the-sunrise-period-preparing-for-the-start-of-the-unitary-patent-and-unified-patent-court

Today, I am going to talk about the practical relevance of preliminary injunctions (PIs) for patent infringement at the UPC.

The respective national case law is all but uniform. In Dutch patent litigation, for example, PIs are very relevant. In contrast, they hardly ever play a role in the UK. In France, their importance has been increasing recently but is still far from day-to-day practice. In Germany, the landscape varies; different instance courts have different practices: while the courts in Düsseldorf and Mannheim are quite reluctant to grant PIs for patent infringement, the courts in Munich and Hamburg generously grant PIs in many cases, not just in the pharma sector but in many other sectors as well.

At European Union level, there is not much related patent case law yet. However, a recently widely reported referral of the first-instance court in Munich, Germany, led the Court of Justice of the European Union (CJEU) to provide some guidance on an important question in April 2022, namely whether or not a successful PI request requires a battle-tested patent. The CJEU found that a battle-tested patent is not required, and more precisely, that national case law, according to which a PI is generally to be refused if the examined and granted patent has not been confirmed again by first-instance opposition or invalidity proceedings, is irreconcilable with Art. 9(1) of the Enforcement Directive. This finding is currently triggering a renaissance of PIs in national patent litigation – at least at courts which have always been open to a significant PI practice like Munich, Hamburg and the Hague – and is thus expected to become similarly relevant before the upcoming UPC.

Just like in national litigation, PIs are available at the UPC based on European black letter law. Moreover, the UPC will have local divisions in Munich, Hamburg and the Hague. At these local divisions, two out of three of the sitting judges will be national judges. It is probably fair to assume that the national judges will somehow import their national view on PI issues to the UPC, at least in the early days. For that reason alone, the local divisions in Munich, Hamburg and the Hague are likely to seriously consider issuing PIs for patent infringement in practice, even when it comes to freshly granted patents which have not been battle-tested yet. Further, the relatively strict German case law on the urgency requirement may well be softened to align with the rather generous Dutch practice.

And finally, maybe most importantly: A significant PI practice allows for creating case law and appellate decisions quickly and thus provides the benefit of some predictability and reliability which is important for an untested, new court. It also allows the various local divisions to compete with each other in attracting patent owners. Such court competition will inevitably take place as many of the UPC judges are appointed for part-time positions with a time limit and must be re-appointed to be entitled to pension claims. Thus, it seems to be the logical consequence that many judges at the UPC will adopt a patentee-friendly approach.

Today, I am going to talk about the practical relevance of preliminary injunctions (PIs) for patent infringement at the UPC.

Previous Episode

IP Expert Talk: The jurisdiction of the UPC

To get informed about the UPC, please visit our special UPC page: https://www.bardehle.com/en/upc-special

We are steadily approaching the take off for the UPC system, hence, it is worth taking a closer look at a topic that is, admittedly, not the most tangible one, but indeed very important. We are talking about the international jurisdiction of the Unified Patent Court, the UPC. Especially at the beginning of the new system you will either want to try out the new system or you will be dragged into proceedings before that new court. The decisive question will be, however, whether the UPC is allowed to hear that case. This question is determined by the international jurisdiction.

What is important to mention for our audience is that the international jurisdiction does not determine which division of the UPC can hear a case. That question is governed by the internal competence of the UPC which is regulated in the Agreement on a Unified Patent Court, the UPCA.

That is a very good point, Anita, and we will most certainly dedicate a separate episode to the internal competence of the UPC. Coming back to international jurisdiction, we have to look into EU Regulation No. 1215/2012 in its current version, which was amended to include the UPC in the system of courts for EU members and to which the UPCA refers. During this podcast we will simply use the term “Brussels Regulation”. In some cases, determining international jurisdiction is simple. However, especially if the parties have their domicile or seat in different countries this can be a complex issue. A bundle of regulations are applicable and countries fall into different categories when determining the international jurisdiction. For example, there are Member States of the European Union participating in the UPC system, EU Member States which are not UPCA contracting member states, contracting states to the Lugano Convention and third states that may or may not be contracting states to the EPC. We will try to explain in a simplified way which circumstances may establish the international jurisdiction of the UPC, of course without claiming to cover every individual case. To say it in advance, the UPC framework provides for a number of roads leading to the UPC, but whether “all roads really lead to Rome”, as the proverb has it, remains to be seen.

The first road that may lead to the jurisdiction of the UPC can be the domicile of a person, or, in case of companies, their company seat. If a defendant is domiciled or seated in Germany or France, for example, that is in countries that are both Member States of the EU and UPCA Member States, it is a clear case. Here, the Brussels Regulation states that the UPC has jurisdiction where the courts of the EU Member State would have jurisdiction. A company seated in Germany or France can therefore be sued before the UPC, because the UPC as a so called “common court” is considered to be a national court of that Member State. Nadine, what about defendants domiciled or seated in states that are EU Member States but that are not UPCA Member States, such as Spain or Poland, or that are domiciled or seated in a Lugano member state, such as Switzerland and Norway?

To those countries we cannot apply the new section of the Brussels Regulation, therefore the international jurisdiction of the UPC cannot be derived from the domicile or seat of a party in those countries. But this is not the end of the story. Because, besides the general jurisdiction previously mentioned, the Brussels Regulation, or the Lugano Convention respectively, provides for several grounds of special jurisdiction. In my opinion the special jurisdictions will be the most used grounds for international jurisdiction of the UPC. The most important one in patent infringement cases probably is the place where the harmful event occurred. If the place of damage or the place of action is within a UPCA Member State, the potential infringer can be sued before the UPC, regardless of where that party is domiciled. Thus, the ground of the place where the harmful event occurred will most likely cover any infringement of a Unitary Patent and/or European Patent and allow the UPC to be internationally competent to hear and decide a case.

There are, however, also other grounds of special jurisdiction worth mentioning which increase the attraction of the new system for plaintiffs. For example, multiple defendants can be sued before the UPC where only one of them, the so-called “anchor defendant”, is domiciled or seated within a UPCA Member State. The prerequisite is that the claims are so closely connected that it is expedient to hear them together to avoid the risk of irreconcilable judgements. In other words – if the same infringing act is at stake, it is sensible to hear those claims together. It is worthwhile to note that this special jurisdiction is mirrored in the inter...

Next Episode

IP Expert Talk: Amending the description

Stay updated on IP-related news: https://www.bardehle.com/en/ip-news-knowledge/ip-news

Amending the description is a requirement that applicants don’t need to deal with in many other countries, like the U.S., for example.

That’s right. But at the EPO, towards the end of the examination proceedings, we have to adapt the description. So, this means for example we need to remove parts of the description that could imply that the scope of protection is actually broader than what is claimed. So, the typical phrases of “spirit of the invention” and also generic references to “incorporation by reference” – we need to delete those. Also, we need to cite the prior art that was found in the search by the Examiner and then discussed during the examination.

That is typically the less controversial part of the exercise. It becomes trickier when the Examiner asks you – in accordance with the current Guidelines – to remove or clearly mark subject-matter that is not covered by the claims because the claims were amended and limited during the examination phase.

Yes, that’s right. That is actually much more delicate. Firstly, because the description is used to interpret the claims. And that means, if we are modifying the description, we could be meddling with the scope of protection that is conferred by the patent. Also, the description forms the basis for the assessment whether the skilled person would be able to practice the invention. So, we have to be extra careful when we delete those parts that are critical in that respect.

From an infringement perspective, marking embodiments or examples as not being covered by the claimed subject-matter is, of course, not very helpful. Just deleting the embodiment, for example, is likely to be the better option. But, as you say, you need to carefully assess what disclosure is actually important, for example under enablement considerations. What I typically try to do is to use positive language instead of excluding language: “Xyz that can be used in conjunction with the claimed method”, for example.

Right, there have actually been two decisions from the Boards of Appeal - one from December 2021 and one from May 2022 - that found that there is actually no need to amend the description. So, these Boards came to the conclusion that there is no legal requirement in the European Patent Convention to do so. So, following these decisions, there would actually be no need to amend the description.

Very interesting decisions indeed, but does that mean that the practice at the European Patent Office has changed or is currently changing?

MDR: Actually not — at least not at first instance – i.e., the Examining Divisions and the Opposition Divisions. There have also been decisions from the Boards of Appeal that contradict the other two decisions and found that, actually, there is a need to adapt the description in order to comply with Art. 84 of the EPC. Also, the Guidelines have recently been updated and they still reflect the EPO’s current practice. On top of that, recently, the EPO made an announcement after a user conference that they will stick with the practice that they have today.

So, unless you are willing to fight this through to the appeal stage, you probably still have to amend the description. But perhaps, we are going to see a referral to the Enlarged Board of Appeal soon aiming to clarify the issue in view of the diverging case law.