UPC CFI, LD Munich, 25 November 2024; Provisional measures denied: no extraordinary damages and doubts about novelty of the patent
19-01-2025 Print this page
Application for provisional measures dismissed (Article 62 UPCA, Rule 211 RoP).
-Extraordinary damages caused by further distribution not submitted, lock-in effect cannot be established.
Doubts as to the novelty of the patent in suit in spite of response of EPO Examining Division to the raised objections of third parties based on D8.
Party: Irrebuttable presumption that registered proprietor of a unitary patent is also the actual proprietor (Rule 8(4) RoP). The general purpose of Rule 8(4) RoP (and similarly of Rule 8(5)(c) RoP) is to keep the proceedings before the UPC separate from the dispute as to the substantive ownership of a European patent, irrespective of whether or not ownership is relevant to the right to bring proceedings or to entitlement to claim.
Claim interpretation (Article 69 EPC).
In principle, the meaning of a dependent claim can contribute to the correct interpretation of the main claim. Dependent claims regularly do not narrow the subject matter of the main claim, but merely show – possibly in connection with an additional advantage – possibilities for its realisation, no differently than in the form of examples.
In principle, the prosecution history does not constitute admissible interpretative material. A European patent cannot be interpreted on the basis of text passages that were deleted from the description during the grant procedure. At best, statements by the applicant or the granting authority to understand the feature of a patent claim to be interpreted could be regarded as an expert opinion.
Weighing of party interests (Article 62(2) UPCA, R. 211(3) RoP). Above all, the weighing of interests must take into account the probability of an erroneous decision and also the objective urgency in terms of the necessity of provisional measures with regard to equally possible proceedings on the merits. Main proceedings are the rule, provisional measures the exception. Is it reasonable or unreasonable for the applicant to wait for a decision in the main proceedings? Doubts as to the novelty of the patent in suit carry additional weight in the weighing of interests.
Unreasonable delay – objective urgency (R. 211(4) RoP) links the requirement of objective urgency with the subjective right of the applicant. The provision expresses that an applicant whose conduct already subjectively indicates that he is in no hurry cannot expect to receive assistance through the ordering of interim measures. However, the reverse conclusion, that interim measures are to be ordered simply because the applicant has acted quickly, does not apply. Rather, the ordering of interim measures must also be objectively urgent.
