The fifth article in this series dealt with the options for bringing infringement and validity actions before the Unified Patent Court (UPC), and this sixth article will address some of the provisional and protective measures that can be granted by the Court.

The Court will have the power to grant various kinds of relief, and certain (provisional) measures can be ordered without the other party being heard – in particular where delay is likely to cause irreparable harm to the patent proprietor or where there is a risk of evidence being destroyed. An applicant for provisional measures will be required to prove to the Court that he is entitled to commence proceedings, that the patent in question is valid, and that his right is being infringed or that such infringement is imminent. Once an application for provisional measures has been filed, the Court will inform the defendant and invite him to lodge a responsive objection as to why the application should fail.

Provisional measures will be treated by way of summary proceedings consisting of both a written and an oral procedure, and it will be possible to apply to the Court to have a party produce evidence (including banking, financial, or commercial documents); to take samples of (or physically seize) infringing products; or to inspect premises in order to preserve evidence. Freezing orders can also be granted to restrain a party from removing or dealing in certain assets; and the Court may also order the seizure or delivery up of products suspected of infringing a patent, or even order an interim award of costs.

However, most patent proprietors will likely seek an injunction to prevent any imminent or continued infringement. As is the case before most courts, the Court will weigh up the interests of both parties and take into account the potential harm resulting from granting or refusing the injunction. The Court will also have regard to any unreasonable delay in seeking provisional measures, and so expeditious application for an injunction is advisable for any applicant.

As we have already discussed, the Court has the discretion to bifurcate infringement and validity proceedings and there is a possibility (and likelihood) that validity actions will not be decided until after a decision on infringement has been made. Consequently, an injunction could be granted on the basis of a patent that is later found to be invalid, creating a so-called “injunction gap”. Bearing in mind an injunction granted by the Court could have pan-European effect; defendants are susceptible to irrecoverable market loss stemming from erroneously-granted barriers to market.

Hence, the impact of an injunction gap is a concern for many potential defendants, and an Industry Coalition comprising stakeholders including Adidas, Dell, Deutsche Post, Google, HP, Intel, Microsoft, and Samsung has highlighted the dangers of the injunction gap on small-to-medium-sized enterprises.

Applicants for an injunction should be aware that, as reparation for the injunction gap, the Court can order an applicant to provide appropriate compensation, in the form of security (by deposit or bank guarantee), for any injury likely to be caused by the granting of the injunction. Moreover, a defendant facing an injunction (or any provisional measure granted by the Court) can request the measure be revoked or otherwise cease to have effect if the applicant does not also start proceedings on the merits of the case.

As another form of defence, if a person entitled to start proceedings before the Court considers it likely that an application for provisional measures might be lodged against him, he can file an anticipatory defence in the form of a non-public protective letter at any time, to take effect for a renewable period of 6 months, and with the purpose of providing facts, evidence, and arguments as to why any application for provisional measures should be rejected by the Court. This practice is already commonplace is countries such as Belgium, Germany, the Netherlands, and Switzerland; and provides an instrument by which a defendant can avoid or render more difficult the granting of ex partes relief.