The UPC will assess whether an application for a preliminary injunction has been made in a timely manner, to ensure that there has not been an “unreasonable delay”, pursuant to Rule 211(4) of the Rules of Procedure.
What amounts to an “unreasonable delay” has now been considered a number of times by the UPC.
10x Genomics v NanoString
For instance, in the 10x Genomics v NanoString case referred to above, the Court confirmed that it was necessary to determine when the applicant first became aware of the infringing activity (or intended infringing activity) to assess whether there had been an unreasonable delay in making the application. However, in this case, given that the application for the preliminary injunction was made on 1 June 2023, being the first day that the UPC was open, there could be no question that there was any questionable delay.
myStromer AG v Revolut Zycling
In myStromer AG v Revolut Zycling[3], the Dusseldorf Local Division issued the decision on 22 June 2023 which was the same day as the application itself was made. It related to myStromer’s patent EP2,546,134 entitled “combined structure of bicycle frame and motor hub”.
As the patentee, myStromer’s assertions of urgency were based on the fact that Revolut Zycling was showing the infringing bike at the famous Eurobike 2023 trade show in Frankfurt from 21 June 2023, being the day before the application was made. It appears that myStromer was not aware of the infringing product until 19 June 2023, immediately before the trade fair – so it was clear that myStromer acted very quickly in making the preliminary injunction application. This was certainly helpful in ensuring that the preliminary injunction was granted.
10x Genomics v Curio Bioscience
The case of 10x Genomics v Curio Bioscience before the Dusseldorf Local Division is less clear cut, but an application where, nevertheless, the Court favoured the arguments of the patentee. Evidence showed that Curio Bioscience’s kit had been sold for a number of years and, therefore, it was Curio Bioscience’s position that the patentee, 10x Genomics, should have brought the application much earlier. However, the Court disagreed – holding that the evidence supported the position that 10x Genomics did not know about Curio Bioscience’s kit until October or November 2023. Since the application was made in December 2023, there had not been an unreasonable delay even though, in reality, Curio Bioscience’s kit may have been around on the market for much longer than this.
Dyson Technology v SharkNinja
However, the most specific guidance on this issue has been provided in the Dyson Technology v SharkNinja case referred to above.
In relation to the question of delay, the Court held that if the applicant files the preliminary injunction within two months of becoming aware of the allegedly infringing products – to allow for investigation and infringement/validity analysis – then this should support a finding that there has not been an unreasonable delay.
Of course, this decision does not mean that an application that is made after two months will automatically fail, but it does provide a good practical steer for how the UPC looks at this issue. It seems likely that persuasive reasons will need to be shown why a delay of more than two months is reasonable.