UPC CFI, LD Paris, 21 November 2025 : Provisional measures regarding a generic version of a product protected by SPC rejected.
21-03-2026 Print this page
Application for provisional measures regarding a generic version of a product protected by SPC rejected. (R.206 RoP)
MERZ failed to demonstrate seeking provisional measures against VIATRIS within reasonable delay provided for by Rule 211.4 RoP.
Applicants seeking provisional measures have to justify that they have been sufficiently diligent to have access to an expedited procedure.
To determine the starting point of the reasonable time limit for taking action, the Court should consider the question:
'When did the applicant become aware, or should have become aware, of the infringement that would enable him, in accordance with R. 206.2 RoP, to file an Application for provisional measures with a reasonable prospect of success?.
The court does not follow the line of reasoning by the applicant that the UPC texts provide for two possible starting points regarding the reasonable time limit for taking PI action, which are successive points in time. (Article 62 UPCA, Rule 211 RoP).
Article 62.1UPCA and Rule 211.2 RoP mention that 'the right is infringed OR such infringement is imminent', and do not make a distinction between two separate and consecutive situations that would create two phases likely to trigger the urgency criterion.
Rather, they provide for two alternative situations that allow for a preliminary injunction claim to be brought before the UPC. The criterion of imminent risk of infringement is particularly relevant in the context of a generic product being placed on the market.
The applicant need not wait for the product to be placed on the market to analyse it and gather sufficient evidence to demonstrate that such product infringes, at least prima facie, the claims of their title (patent or SPC).
Such a product automatically falls within the scope of protection once it is classified as a generic version of the product protected by said title and declared as such.
The fact that the first act of infringement on the French market occurred on the date of publication of the French market launch cannot be considered as a new starting point that creates urgency . Thus, to quote the terms of The Hague LD, this fact "was already (to be) expected and does not revive urgency". (Cilag v Rivolution)
