The first inter partes preliminary injunction for a European Patent with unitary effect (“Unitary Patent”) was granted by the Unified Patent Court (“UPC”) local division in Munich on 19 September 2023. The decision to grant the preliminary injunction to the patentee Harvard University and its exclusive licensee 10x Genomics without a security deposit was published in full in German about a week later and is a further indication that the UPC seems to be developing into a patentee-friendly and highly efficient patent litigation court.
In the decision (in German), the judges emphasized the advantages provided by Unitary Patents over classic European bundle patents (see headnote 3) and interpreted the UPC largely in favor of the patentee (e.g. see headnote 1) instead of adopting more cautious principles of national (German) case law.
In granting a preliminary injunction, the UPC should take into account, among other requirements, the urgency of the case (according to Rule 209.2 Rules of Procedure, “RoP”) and any unreasonable delay in seeking provisional measures by the claimant (Rule 211.4 RoP).
The defendants (NanoString Technologies and its German and Dutch subsidiaries) argued that there was “an unreasonable delay in seeking provisional measures”. According to the defendants, refraining from enforcing earlier rights on the national level and postponing the EPO grant procedure to obtain a Unitary Patent represented an unreasonable delay. The Court noted, however, that the enforcement of a Unitary Patent and the enforcement of a European Patent without unitary effect, which has to be pursued separately in each individual country, are not equally efficacious. In view of the strength of Unitary Patents, the Court was of the opinion that arguing unreasonable delay in seeking provisional measures” of Rule 211.4 RoP cannot stem from failing to use a bundle of national validations that suffer from weaker enforcement capability due to varying national procedures and differences in national legal systems.
In this context, the Munich local division also criticized the former practice of some German courts (until the ECJ decision in Case C-44/21) according to which preliminary measures could only be granted if the patent in question had already survived an invalidity attack in first instance proceedings. The UPC judges deciding this case appeared to be of the opinion that the stricter practice of German national courts represents another good reason why the plaintiffs’ decision to wait for the launch of the UPC system instead of enforcing on the national level does not constitute “an unreasonable delay in seeking provisional measures”.
This aspect of the decision confirms the usefulness of strategies to obtain double protection for certain technologies by seeking both a Unitary Patent as well as protection on the national level (e.g., by an opted-out classic divisional European patent and/or national patents / utility models). Obtaining protection on the national level for similar subject matter before obtaining a Unitary Patent should not impair enforcement of the Unitary Patent. Indeed, in this case the Unitary Patent was itself a divisional application of a European patent which was validated in the countries of interest.
Pursuant to Rule 211.2 RoP, the UPC’s decision on a request for preliminary measures should include assessing whether the patent in question is valid with a “sufficient degree of certainty”. According to the court's decision, this degree of certainty is already met where it is more probable than not that the patent is valid. In other words, more than a 50% likelihood that the patent would survive an attack against its validity appears to be sufficient certainty for the UPC local division in Munich to grant the request for a preliminary injunction. Remarkably, the Court, which included two well-known German judges, rejected the German case law that sets a higher probability for the validity of the patent and instead adopted the most patentee-friendly, but still reasonable position possible.
Furthermore, according to Rule 206.2 (e) RoP, “[a]n Application for provisional measures shall contain […] 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.”
The version of the RoP downloadable from the UPC’s website contains a reference (which does not itself form part of the RoP) to Article 62 UPCA dealing with provisional and protective measures. Some may find it reasonable to say that a request for a preliminary injunction has to fulfill the requirement of Rule 206.2 (e) RoP, i.e. to describe the infringement action that needs to be filed (if not yet pending) after the request for a preliminary injunction.
Nevertheless, the Munich local division stated that requests pursuant to Art. 62(1) UPCA are not affected by this requirement. While the Court argued that it makes sense only to apply Rule 206.2 (e) RoP to different situations (namely those set out in Articles 60 and 61 UPCA), it remains to be seen whether other courts will adopt the position of the Munich local division.
In short, the Court found that the defendants infringed the plaintiffs’ patent with a very high probability and also that the validity of the patent in suit had been demonstrated with sufficient certainty. Therefore, and in view of the defendants’ economic situation, the Court did not see a threat to the defendants’ potential claim for damages in case the preliminary injunction should be revoked and granted the injunction without security (bond).
After the grant of the first ex parte preliminary injunction by the Vienna UPC local division without hearing the defendant despite the fact that a (perhaps less than adequate) protective letter had been filed, the first inter partes pan-European preliminary injunction granted by the Munich UPC local division, discussed above, is a further indication that the UPC is developing into a patentee-friendly and efficient litigation court. So far, only a few months into the new UPC system, preliminary injunction proceedings including one held recently in the Helsinki UPC local division, for example, have been much faster and efficient compared the speed and efficiency of many national European courts. Thus, since the UPC covers the most relevant jurisdictions of continental Europe, it might soon be viewed as the world’s leading patent litigation court.
The article was initially featured in Lexology. The authors, Suvi Julin and Michael Braun, are available for any inquiries related to the subject matter.