- The Unified Patents Court (UPC) may grant a range of provisional remedies, including preliminary injunctions and orders for the seizure or delivery up of products.
- The UPC may grant either remedy after hearing both the parties or without hearing the defendant (ex parte) in specified circumstances.
- A prospective defendant to ex parte proceedings may file protective letters to try to persuade the UPC to order a hearing before a preliminary injunction or seizure order is granted.
- Having obtained a preliminary injunction or seizure order, the applicant must start substantive proceedings before the UPC within a specified deadline or face the prospect of revocation of the remedies and a compensation award.
Can the UPC grant preliminary injunctions and seizure orders?
The UPC may grant a range of provisional remedies. This update will focus on the following remedies:
- preliminary injunctions against alleged infringers or intermediaries to prevent threatened or continuing infringement (subject, where appropriate, to a recurring penalty payment) or to make such continuation subject to the lodging of guarantees intended to ensure the compensation of the right holder;
- orders for the seizure or delivery up of products suspected of infringing a patent to prevent their entry into, or movement, within the channels of commerce; and
- if an applicant demonstrates circumstances likely to endanger the recovery of damages, a precautionary seizure of the movable and immovable property of the defendant, including the blocking of his bank accounts and other assets.
Our previous update which discusses the other provisional remedies which the UPC may grant can be found here.
The territorial scope of each measure is dependent on the patent which is alleged to have been infringed. For European Patents, the effect extends to UPC member states where the respective national part of the patent is in force. For a new Unitary Patent, the effect extends to all UPC member states at the time the patent is granted.
An application for a preliminary injunction and/or seizure order can be filed either before or during substantive proceedings.
Applying for preliminary injunctions and seizure orders
An application for a preliminary injunction or seizure order should contain:
- evidence for why the requested remedy is necessary to prevent a threatened or ongoing infringement (or to make such continuation subject to the lodging of guarantees);
- reasonable evidence to satisfy the Court that the patent in question is valid and is being infringed (or that such infringement is imminent);
- evidence for why the Court should exercise its discretion and grant the requested remedy having weighed up the interests of the relevant parties; and
- a concise description of the substantive action which will be started before the Court (if not already done so).
It is not clear at this time what evidence would satisfy the Court that a patent is valid. However, suitable evidence might include evidence that a patent has been survived opposition proceedings before the European Patent Office or a validity challenge before national courts.
In turn, the Court will make its decision based on the evidence before it. This will involve consideration of:
- whether the Court should exercise its discretion, by weighing up the interests of the parties and, in particular, taking into account the potential harm for either of the parties resulting from the granting or the refusal of the requested remedy;
- any unreasonable delay in seeking the requested remedy; and
- whether the applicant should provide security for the compensation of the defendant should the requested remedy be revoked.
Ex parte applications for preliminary injunctions and seizure orders
Preliminary injunctions and seizure orders may also be granted without hearing the defendant (ex parte) in exceptional circumstances. The UPC’s Rules of Procedure identify that this may be appropriate where, in particular, “any delay is likely to cause irreparable harm to the applicant or where there is a demonstrable risk of evidence being destroyed”.
Applications for remedies to be granted ex parte should additionally contain:
- the reasons for not hearing the defendant; and
- information about any prior correspondence between the parties concerning the alleged infringement.
The applicant is also under a duty to disclose any material fact known to it which might influence the Court in deciding whether to make an order without hearing the defendant, including any pending proceedings and/or any previous unsuccessful attempt to obtain remedies in respect of the patent.
Where the Court agrees to grant a preliminary injunction or seizure order ex parte, the Court shall order the applicant to provide adequate security for the compensation of the defendant should the requested remedy be revoked unless there are special circumstances not to do so (and the order shall only be effective once the security has been provided).
Where an applicant applies for a preliminary injunction or seizure order and the Court decides to summon the parties to an oral hearing, all parties will have the opportunity to present their case in respect of the requested remedies. The defendant may lodge an Objection setting out evidence for why the application should fail (and, where substantive proceedings have not yet been started, evidence for why the substantive action shall also fail).
In addition, a party that considers it likely that it may be subject to an application for a preliminary injunction or seizure order may pre-emptively file a protective letter with the UPC. Such a protective letter may contain facts/evidence or arguments of law to support the assertion that the requested remedies should not be granted (e.g. arguments of non-infringement or patent invalidity). The protective letter will not be publicly available until an application for a preliminary injunction or seizure order has been made.
If a preliminary injunction or seizure order is applied for, and a protective letter has been filed, the Court shall take into account the protective letter and consider summoning the parties to an oral hearing before reaching a decision on the grant of the requested remedies.
The pros and cons of protective letters are discussed in greater detail here.
Consequences of grant of preliminary injunctions and seizure orders
If an applicant is granted a preliminary injunction or seizure order ex parte, it must give notice of the to the defendant without delay and at the latest immediately at the time of execution of the remedies.
The successful applicant for a preliminary injunction and seizure order must also start substantive proceedings within 31 calendar days or 20 working days (whichever is longer). If not, the remedies cease to have effect (upon request of the defendant).
A preliminary injunction or seizure order is subject to appeal. An appeal will not have suspensive effect (unless the Court of Appeal decides otherwise) and shall not prevent the continuation of the main proceedings (though no decision in the main proceedings should be given before the appeal is completed).
Where a preliminary injunction or seizure order is revoked or lapses (whether due to any act or omission by the applicant, or where it is subsequently found that there has been no infringement or threat of infringement of the patent), the Court may order the applicant (upon request of the defendant) to provide the defendant with appropriate compensation for any injury caused by the measures.