Provisional measures such as preliminary injunctions have always been of particular importance in IP litigation, including patent litigation. In this edition of our series of articles on the Unified Patent Court (UPC), we examine the procedural rules for provisional measures for the upcoming Unified Patent Court.
The UPC Rules of Procedure provides patent holders with various provisional measures to be used under different circumstances prior to a full trial, e.g. where the case cannot wait for a full trial to be completed because of the urgency of the matter in question or where such measures are required to preserve evidence.
At the request of a patent holder and subject to requirements on appropriate evidence, the UPC may order different provisional measures, including but not limited to:
- Preliminary injunctions;
- Ordering a measure to preserve evidence (a so- called saisie) of an alleged infringement, i.e. normally carried out by a bailiff conducting a raid at the alleged infringer’s premises to seize evidence,
e.g. documents or goods;
- Ordering the inspection on site of products, devices, methods, or premises;
- Ordering the seizure and delivery up of infringing goods to prevent their entry into or movement within the cannels of commerce;
- “Freezing orders”, i.e. ordering an alleged infringer not to relocate assets to a country outside the UPC’s jurisdiction; and
- Ordering the seizure of assets or blocking of bank accounts of an alleged infringer where the patent holder demonstrates the existence of circumstances likely to endanger the recovery of damages.
Due to the unified nature of the UPC, the local divisions may order provisional measures to be carried out anywhere in the UPC territory. Consequently, in many situations a patent holder may obtain an order, e.g. to preserve evidence or for the seizure of infringing goods, from the local UPC division of its home country and then, subsequently, the order may be executed in another member state. This is one of the fundamental changes in the European procedural landscape as a result of the new system as it simplifies the enforcement procedure for patent holders across the UPC territory.
Proceedings on provisional measures are as a starting point treated by way of summary proceedings often involving two stages, namely i) a written procedure and ii) an oral procedure (that may include an oral hearing of both or one of the parties).
Applications for a preliminary injunction, delivery up, or the seizure of goods or property shall focus on providing reasonable evidence to satisfy the UPC with a sufficient degree of certainty that the applicant is entitled to commence the proceedings (i.e. evidencing to be patent holder or licensee with right to commence proceedings), that the patent in question is valid and that the right in question is being infringed or that such infringement is imminent. It is worth noticing that the burden of proof is subject to the standard “with a sufficient degree of certainty”. This standard may be less than in ordinary proceedings before the UPC, but based on the wording, it may be heavier than solely “rendering it probable”, which is the burden of proof- standard in several Member States’ current legislation on provisional measures, including Denmark.
For proceedings regarding saisies, inspections, and the freezing of assets, the application must include information on the exact location of the evidence to be preserved, inspected or frozen. In these cases, the application shall focus on the urgency of the matter and the probability of evidence getting destroyed or ceasing to be available.
Proceedings ex parte
Upon receiving an application for provisional measures, the UPC will normally inform the defendant about the application and invite him/her to lodge an objection to the application or summon the parties to an oral hearing.
However, under exceptional circumstances, the UPC may order provisional measures without hearing the defendant (a so-called ex parte procedure) if a delay in the proceedings would likely cause irreparable harm to the patent holder or where there is a demonstrable risk of evidence being destroyed.
To oppose such potential applications for provisional measures ex parte, a party who foresees the possibility of being sued at the UPC may wish to defend himself by filing a so-called Protective Letter. A Protective Letter allows the party to proactively set out the reasons why an application for provisional measures should not be granted without hearing the defendant. Consequently, Protective Letters may be of great importance to defendants and they will be further discussed in our next (and fourth) article in this series.
Following the order of a provisional measure
If the provisional measure applied for is ordered by the UPC, the applicant must – if not already done – instigate proceedings on the merits of the case within 31 calendar days or 20 working days (which-ever is the longest) calculated from the date of the order of the UPC. If the applicant does not comply with this deadline, the order will upon request of the defendant be revoked or otherwise cease to have effect.
In such case where the order is revoked or ceases to have effect, the UPC may upon request of the defendant order the applicant to provide the defendant with appropriate compensation for any injury caused by the provisional measure.