Interim injunctions before the Unified Patent Court

After more than a year of the Unified Patent Court (UPC) in operation, this article examines the regulations and previous case law on interim injunctions before the UPC and highlights the differences compared to proceedings before German courts.

Now that the Unified Patent Court (UPC) has commenced its work last year, this article deals with the special features of injunction proceedings before this court. To do this, it first highlights the special features of the relevant regulations in contrast to those for summary proceedings before national courts and then provides a brief summary of the interim injunctions already issued by the UPC with regard to deviations from the national case law of German courts

Rules of procedure for the issuance of interim injunctions at the UPC

Provisional measures at the UPC are regulated in Rules 205 et seq. of the UPC Rules of Procedure (RoP).
Rule 206 RoP initially sets out the mandatory information that an application for a provisional measure must contain. A new feature compared to the rules for injunction proceedings before German courts is contained in R. 206 No. 2e RoP, according to which an application for a preliminary injunction must contain “a brief description of the action that will be brought before the court, including the facts and evidence on which the main action on the merits will be based”. The purpose of this provision is to enable the court to assess the prospects of success in the main proceedings. However, in the vast majority of cases, the information on the facts and evidence of the action to be brought corresponds to the grounds of the application for an injunction (Tilmann/ Plassmann, Unitary patent, Unified Patent Court, R. 206 EPGVerfO Rn.29).

A further peculiarity of the UPC’s proceedings is contained in Rule 206 (3) RoP. According to this, the applicant may file a request for a decision without hearing the opposing party. He must provide reasons for the hearing to be omitted, which could be, for example, that it would jeopardize the outcome of the order or that there is a particular urgency. Outside the RoP area, an order without a hearing will not be recognized and/or enforced (Art. 45 I b, 46 Brussels Ia Regulation). The earlier correspondence with the defendant regarding the alleged patent infringement must be indicated and the warning and the application for the injunction must match. A new aspect compared to national injunction proceedings before German courts is that, according to Rule 209 RoP, it is possible to request that the proceedings be treated confidentially if the application is only for a decision without a hearing and will otherwise be withdrawn.

Decisions already issued

The following is a brief overview of the particularities of interim decisions already issued by the UPC.

One aspect in which the UPC’s decision-making practice to date differs from that of German courts is the urgency required for the issuance of interim measures. In this regard, the UPC has decided that an applicant does not have to refer to the court until he has reliable knowledge of all the facts that make legal action in the proceedings for the ordering of interim measures promising and if he can establish these facts credibly (UPC (Regional Court Düsseldorf), Order of Apr. 9, 2024 – UPC_CFI_452/2023)

R. 213.2 of the Rules of Procedure gives the court the opportunity, as part of the decision-making process, to order the applicant to present all reasonably available evidence in order to be able to satisfy itself with sufficient certainty that the applicant is entitled to initiate the proceedings, that the patent in question is valid and that the patent has been infringed or is at risk of being infringed. The applicant must regularly respond to this within short deadlines, which is why it is necessary to prepare for the proceedings accordingly. He may prepare for any possible procedural situation in such a way that he can present the requested information and documents to the court upon a corresponding order and successfully reply to the arguments of the opposing party. It follows that the applicant must in principle only then appeal to the court when he has reliable knowledge of all the facts that make a legal prosecution in the summary proceedings promising and when he can also establish these facts credibly. However, the applicant must not delay unnecessarily either, but must take the necessary measures to clarify the matter and collect material to support the application as soon as he becomes aware of the facts giving rise to the infringement. If the applicant has the necessary knowledge and documents, he must file the application for interim measures within one month (EPG (LK Düsseldorf), Anordn. v. 9.4.2024 – UPC_CFI_452/2023). Grossly negligent lack of knowledge is equivalent to positive knowledge.

The urgency in terms of time required for the ordering of interim measures is only lacking if the applicant, in pursuing his claims, has behaved in such a negligent and hesitant manner that, from an objective point of view, it must be concluded that he is not interested in the swift enforcement of his rights. In such a case, it does not seem appropriate to allow the applicant to seek interim relief (see also UPC_CFI 2/2023 (Munich District Court), order of September 19, 2023, 1513, 1524 – Verification Procedure; UPC CFI 452/2024 (DC Düsseldorf), Order of April 9, 2024, p. 27, GRUR-RS 2024, 7207, para. 126).
This seems to indicate that the UPC handles the requirement of urgency somewhat more generously than German courts, where an application for a preliminary injunction must generally be filed one month after becoming aware of the infringement.

Another deviation between German case law and the UPC’s previous decision-making practice concerns the degree of the court’s conviction of the validity of the patent in suit.

On September 19, 2023, the UPC Local Division in Munich ruled (UPC_CFI_2/2023) that, in the context of an order for provisional measures under Art. 62 UPCA, a preponderance of probability that the court is firmly convinced of the validity of a patent is necessary but also sufficient. Before the UPC, only the conviction of the board itself of the validity is decisive, since the same board would also be responsible for the assessment of validity in the event of a counterclaim in the main proceedings. Since the UPC does not distinguish between infringement and validity proceedings, a first-instance confirmation of the validity of the patent is of less importance for the expedited proceedings before the UPC. Parallel proceedings regarding validity before the EPO or before courts of the Member States will be taken into account when the chamber exercises its discretion (R. 209.2(a) RP.

Neither the UPCA nor the Rules of Procedure define the degree of conviction that is “sufficiently certain”, which is why, in principle, any degree of probability can be considered. Therefore, the specific purpose of forming a conviction must be taken as a basis when determining the latter, whereby particular consideration must be given to the fact that it is not a matter of final orders, but of the ordering of provisional measures in a summary procedure that are limited in time in accordance with R. 213 RoP (R. 205 RoP). Due to the provisional nature of the measures and the limited possibilities for obtaining knowledge in summary proceedings, the standard of probability must be lowered, which is why a probability bordering on certainty cannot be demanded. For the court to be sufficiently convinced of the validity of the patent in dispute, a preponderance of probability is necessary, but also sufficient; it must be more likely that the patent is valid than that it is not valid. GRUR 2023, 1513 para. 147). Contrary German case law, according to which the patent need only be capable of being revoked after the invalidity action has been brought, is not relevant in the scope of application of the UPCA and the RoP. (GRUR 2023, 1513) According to R. 211 no. 2 of the Rules of Procedure, the court has to make a decision on a case-by-case basis with regard to the legal validity of the patent specifically asserted.

Overall, interim proceedings before the UPC do not differ fundamentally from those before German courts, but there are some particularities.