Provisional measures can be ordered by the Unified Patent Court (UPC) to prevent an imminent infringement of the patent or to prohibit the continuation of an alleged infringement. If necessary, the court can prohibit the continuation of the infringement under threat of penalty payments or make it subject to the provision of security in order to ensure that the right holder is compensated (Art. 62, para. 1 Agreement on a Unified Patent Court – UPCA).
Provisional measures are ordered by way of summary proceedings, which comprise written and oral proceedings, with both or one of the parties being heard (ex parte) (Rule 205 Rules of Procedure of the UPC).
Types of provisional measures
The Court may in particular order the following provisional measures:
(a) injunctions against a defendant
(b) the seizure or delivery up of the goods suspected of infringing a patent right so as to prevent their entry into or movement within the channels of commerce
(c) 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
(d) an interim award of costs. (Rule 211, para. 1 a – c UPC Rules of Procedure, Art. 62, para. 1, 3 UPCA).
Application for provisional measures
The application for provisional measures can be filed by a party with the court both before and after the main proceedings have been instituted (Rule 206, para. 1 UPC Rules of Procedure). In addition to formal information such as the names and addresses for service of the parties, patent number, etc. (Rule 13, para. 1 UPC-RO), it must also include the following: (i) the indication of which provisional measure is requested, (ii) the reasons why the order of provisional measures is necessary to prevent an infringement, to prohibit its continuation or to make such continuation subject to the provision of security, (iii) the facts and evidence on the basis of which the order is requested and supporting its necessity, and (iv) a concise description of the action which will be started before the Court, including an indication of the facts and evidence which will be relied on in support of the main proceedings on the merits of the case (Rule 206, para. 2 a-e UPC Rules of Procedure).
The applicant must demonstrate that the patent in question is valid, that he is entitled to initiate proceedings under Art. 47 UPCA, that he is the right holder and that his right is being infringed or threatened with infringement (Rule 211, para. 2 UPC Rules of Procedure). He must therefore prove that his right under his valid patent is being infringed and that its protection is necessary by ordering provisional measures. In order to be able to satisfy itself with sufficient certainty that the above-mentioned requirements are met, the court can oblige the applicant to submit all available evidence (Art. 62, para. 4 UPCA, Rule 211, para. 2 UPC Rules of Procedure). According to the Court of Appeal of the Unified Patent Court, such a sufficient degree of certainty requires that the court considers it at least more likely than not that the applicant is entitled to initiate proceedings and that the patent is infringed. A sufficient degree of certainty is lacking if the court considers it on the balance of probabilities to be more likely than not that the patent is not valid.[1]
The burden of presentation and proof for these facts, from which the entitlement to initiate proceedings and the infringement or threatened infringement of the patent are to arise, as well as for all other circumstances which are to support the petitioner’s request, lies with the petitioner, just as in the main proceedings (Art. 54 UPCA). On the other hand, the burden of presentation and proof for facts relating to the lack of validity of the patent and other circumstances supporting the defendant’s position lies with the defendant, unless the subject of the decision is the ordering of measures without hearing the defendant.
In addition, the applicant can request that provisional measures are ordered without hearing the other party. In this case, the application must also contain the reasons for not hearing the defendant and any information on previous inter-party correspondence in this regard (Rule 206, para. 3 a-b UPC Rules of Procedure). If the applicant applies for provisional measures to be ordered without hearing the defendant, he undertakes to disclose all material facts known to him that could influence the court’s decision to make an order without hearing the defendant (Rule 206, para. 4 UPC Rules of Procedure). The defendant can protect himself against an ex parte order by filing a protective letter (Rule 207 EPG-VerfO). If such a document is filed, the court must in particular consider summoning the parties to an oral hearing (Rule 209, para. 2 d of the Rules of Procedure).[2]
Decision of the court
The date for the oral hearing, in inter partes proceedings, shall be set by the court as soon as possible after receipt of the application for provisional measures (Rule 210, para. 1 UPC Rules of Procedure). If the applicant fails to attend the hearing without reasonable cause, the application for provisional measures will be rejected (Rule 210, para. 3 UPC Rules of Procedure).
Before or during the oral hearing, the court may request the parties to submit any information, documents and evidence that will enable it to reach a decision (Rule 210, para. 2 UPC Rules of Procedure). In reaching its decision, the court has the discretion to weigh the interests of the parties against each other and, in particular, to take into account the potential harm that could arise for one of the parties from the granting or rejection of the application (Art. 62, para. 2 UPCA, Rule 211, para. 3 UPC Rules of Procedure). In addition, the court will consider unreasonable delay in applying for provisional measures (Rule 211, para. 4 UPC Rules of Procedure).
The decision to order provisional measures is issued in writing as soon as possible after the conclusion of the oral proceedings. It must contain an indication that an appeal may be lodged in accordance with Article 73 UPCA and Rule 220, paragraph 1, UPC Rules of Procedure (Rule 210, paragraph 4 and 211, paragraph 6, UPC Rules of Procedure). At the discretion of the court, the decision may be pronounced before it is recorded at the end of the oral proceedings (Rule 210, para. 4 UPC Rules of Procedure).
In addition, the court may order provisional measures without hearing the defendant (ex parte order). This can be done in particular if a delay would probably cause irreparable harm to the applicant or if there is a demonstrable risk that evidence will be destroyed (Rule 212, para. 1 UPC Rules of Procedure and Art. 60 para. 5 UPCA). In this case, the respondent is informed of the provisional measures without delay, but at the latest immediately at the time of execution of the measures, and can subsequently request a review in this regard (Rule 212, para. 2, 3 and Art. 60, para. 6 UPCA). This review can be requested within 30 days of the execution of the measures and leads to an oral hearing in which the court can amend, revoke or confirm the order (Rule 197, para. 3, 4 UPCA).
In addition, if the order has been made without hearing the defendant, the court may make the enforcement of the provisional measures subject to the provision of security by the applicant in order to ensure that the defendant is not disadvantaged by the enforcement (Rule 211, para. 5 UPC Rules of Procedure and Art. 60, para. 7, 9 UPCA).
Revocation of provisional measures
The applicant must initiate proceedings on the merits before the court within a period of 31 calendar days or 20 working days, whichever is the longer, otherwise the court will ensure that the provisional measures are revoked or otherwise set aside at the request of the defendant (Rule 213, para. 1 UPCA and Art. 60, para. 8 UPCA). This is without prejudice to any claims for damages that the respondent may be able to assert. The time limit starts from the date specified in the court’s order.
Furthermore, if the provisional measures are cancelled or lapse or if it is subsequently established that the patent has not been infringed, the defendant may request compensation for all damages incurred as a result of the measures ordered (Rule 213, para. 2 UPC Rules of Procedure and Art. 60, para. 9 UPCA).
Provisional measures in practice
From the start of the court’s activities on 1 June 2023 until the end of October 2024, the Court of First Instance received a total of 41 applications for provisional measures.[3] Most of the applications were submitted to the Munich local division, which, with a total of 17 applications, is the local division with the largest workload. This could lead to delays in decisions on provisional measures, as happened recently in the case of Tiroler Rohre and SSAB Swedish Steel, in which the court took five months.
The parties can be represented in court at the UPC by both attorneys and patent attorneys (Art. 48 (1), (2) UPCA). European patent attorneys who are authorised to act as professional representatives before the European Patent Office in accordance with Art. 134 of the European Patent Convention (EPC) and who have the necessary qualifications (certificate for conducting European patent litigation proceedings or similar additional training) can fully represent the parties at the UPC. This option appears to be increasingly being utilised by the parties.
Author: Dr Olga Michala
E-mail: michala@paustian.de
[1] See the order of the Unified Patent Court issued on 26/02/2024, UPC_CoA_335/2023 – NanoString. / .10xGenomics II
[2] You can find more information on the protective letter in our article ¨The protective letter at the Unified Patent Court¨.
[3] See the court’s monthly report on its workload at: https://www.unified-patent-court.org/sites/default/files/upc_documents/Case%20load%20of%20the%20Court_end%20October.pdf