UPC CoA, 30 April 2025: Successful appeal: preliminary injunction granted
01-07-2025 Print this page
Successful appeal: provisional injunction and order to communicate information granted (Article 62 UPCA, Article 67 UPCA, R. 206 RoP).
Claim interpretation is a matter of law (Article 69 EPC).
The Court cannot leave the judicial task of interpreting the patent claim to an expert but has to construe the claim independently.
The skilled person is a notional entity that cannot be equated with any real person in the technical field of the invention. The decisive factor is not the individual knowledge and abilities of a person, but rather the general specialist knowledge that is customary in the relevant field of technology, as well as the average knowledge, experience, and abilities in this specialist field. It is for the Court, not the expert, to assess these circumstances.
Necessity of provisional measures and balance of interests (Article 62(2) UPCA and R. 211.3 RoP). The necessity for provisional measures arises because of the move from a market situation where only one product is available to one where there are two such competing products; evidence of price undercutting, and the fact that switching between attacked embodiment and originator’s products is difficult, time consuming and expensive. Once patients and hospitals have decided in favour of the attacked embodiment, the applicant´s market access is initially blocked in this respect. When weighing up the interests, it must be taken into account that a decision in the proceedings on the merits is to be expected around December 2025.
Risk of continuation of infringement (R. 211.2 RoP). In general, the risk of the continuation of the infringement arises from a prior infringement, if the infringer does not issue a cease-and-desist declaration with a sufficient penalty clause.
Territorial scope (Article 34 UPCA): As a rule, injunctions will cover the territory of those Contracting Member States for which the patent has effect, unless certain circumstances justify an exception (CoA Sumi v Syngenta para. 103). The fact that the attacked embodiments are not offered anymore in Germany, does not justify excluding Germany from the preliminary injunction.
Cost decision in proceedings for provisional measures (Article 69 UPCA). If one party is partially unsuccessful, the costs do not always have to be apportioned proportionately. In particular, where a party's unsuccessful claim was relatively minor and did not cause further costs, its entire costs may be awarded against the other party.
