Rule 209 – Examination of the Application for provisional measures

1. Without prejudice to the Court’s decision on the Application for provisional measures, the Court shall have the discretion – including where the Application is made pursuant to Rule 206.3 – to:

(a) inform the defendant about the Application and invite him to lodge, within a time period to be specified, an Objection to the Application for provisional measures which shall contain:

(i) the reasons why the Application shall fail;

(ii) the facts and evidence relied on, in particular any challenge to the facts and evidence relied on by the applicant; and

(iii) where main proceedings on the merits of the case have not yet been started before the Court, the reasons why the action which will be started before the Court shall fail and the facts and evidence relied on in support;

(b) summon the parties to an oral hearing;

(c) summon the applicant to an oral hearing without the presence of the defendant.

2. In exercising its discretion pursuant to paragraph 1, the Court shall in particular take into account:

(a) whether the patent has been upheld in an opposition procedure before the European Patent Office or has been the subject of proceedings in any other court;

(b) the urgency of the action;

(c) whether the applicant has requested provisional measures without hearing the defendant and whether the reasons for not hearing the defendant appear well-founded; and

(d) any Protective letter filed by the defendant; the Court shall in particular consider summoning parties to an oral hearing if a relevant Protective letter has been filed by the defendant.

3. In cases of extreme urgency the standing judge appointed in accordance with Rule 345.5 may decide immediately on the Application for provisional measures and the procedure to be followed on the Application.

4. If the applicant has applied for provisional measures without hearing the defendant and the Court decides not to grant provisional measures without hearing the defendant the applicant may withdraw the Application and may request that the Court order that the Application and the contents of the Application remain confidential.

5. If the patent the subject of the Application is also the subject of a protective letter pursuant to Rule 207 the applicant may withdraw the Application pursuant to paragraph 4.

Case Law:

Court of Appeal

IPPT20250214, UPC CoA, Abbott v Sibio
Urgent interest (R. 209.2(b) RoP). Abbott cannot reasonably be denied an injunction for being cautious not to accuse Sibionics of infringing acts prior to having done a thorough investigation by an independent third party, whereby in view of possible validity attacks it also anticipated the possibility that it might have to rely on more limited dependent claims. 

Court of First Instance

IPPT20240909, UPC CFI, LD Hamburg, Philips IP v Shenzhen
Ex parte preliminary injunction and seizure of infringing oral cleansing system in connection with IFA 2024 trade fair in Berlin following earlier cease-and-desist-declaration (Article 62 UPCA, R. 209 RoP)

IPPT20240827, UPC CFI, LD Munich, Syngenta v Sumi Agro
Provisional injunction: imminent danger that the Applicant's right will be infringed by the contested embodiment in the Contracting States, in particular in Germany and Bulgaria (Article 62 UPCA, R. 211 RoP). In proceedings for provisional measures the number of invalidity arguments must generally be reduced to the best three (R. 211(2) RoP). Temporal urgency, unreasonable delay (R 209(2)(b) RoP,  R 211(4) RoP). In view of the diverging case law on temporal urgency, which grants the applicant only one month, […] the Local Division Munich adheres to its case law granting two months.

IPPT20240827, UPC CFI, LD Munich, Hand Held Products v Scandit

Preliminary injunction for indirect infringement (Article 62 UPCA, R. 211.2 RoP). Sufficient degree of certainty for provisional measures regarding indirect infringement, not regarding direct infringement (Article 62(4) UPCA, Rule 211(2) RoP, Article 25 UPCA, Article 26 UPCA)). Urgency (Rule 209(2)(b) RoP, Rule 211(3) RoP). As soon as the applicant has all knowledge and documents that reliably enable a promising legal action, he must regularly file the application for interim measures within two months. In case of an injunction to prevent indirect infringement it must always be considered whether a relative prohibition or an absolute prohibition should be issued in view of the remaining possibilities for the patent infringer to offer or supply the essential means for other, non-infringing purposes. Infringement. Validity. Burden of proof. It is the task of the defendant in the present case to present arguments based on the prior art that make the legal validity of the patent in dispute appear insufficiently secure (Article 54 UPCA). Due to the summary nature of the examination of the legal validity in proceedings for the adoption of interim measures, the number of arguments raised against the legal validity must generally be reduced to the best three from the defendant's point of view. The background to this is that while a summary judgement on questions of fact is conceivable, a summary examination of questions of law is not.

IPPT20240603, UPC CFI, LD Hamburg, Ballinno v UEFA
Application for provisional measures dismissed because of a lack of urgency from a temporal perspective; unreasonable delay in seeking provisional measures (Article 62 UPCA, Rule 209(2)(b) RoP, Rule 211 RoP). No necessary measures to clarify the alleged infringement and obtain the documents required to support its claims were taken between mid-November 2023 (when it became clear that a settlement was not within reach) and mid-February 2024. Local Division not convinced with sufficient certainty that the Defendants infringe the patent in suit (Article 62(4) UPCA, Rule 211(2) RoP; Article 69 EPC). The realization of several features of the patent claim is disputed between the parties (see below under IV. 2.). On summary examination, the Court finds that the attacked embodiment does not make direct or indirect literal use of claim 1 or 8 of the patent in suit (see below under IV. 3.). An infringement by equivalent means has also not been sufficiently demonstrated (see below under IV. 4.). […] it cannot be concluded that it is more likely than not that the attacked embodiment makes literal use of the teaching of patent claim 1 and/or 8, and their dependent claims 3, 7, 10 and 15. The facts of the case do not convince the Court that the attacked embodiment establishes an infringement by equivalent means. The technology used in the “Connected Ball Technology” does not make use of the same technical effect. Neither can a support vector machine nor the functioning of the “Connected Ball Technology” in particular be seen as equivalent to the patented com-parison of sound signals. 

IPPT20240521, UPC CFI, LD Munich, Dyson v SharkNinja
Preliminary injunction for Germany and France (Rule 211 RoP). Urgency (Rule 209(2) RoP): Two months is normally not an unreasonably long wait for filing an application for provisional measures in the case of a suspected infringement in two or more countries, in view of the necessary prior examination as to whether the embodiments of the defendants actually make use of the teaching of the patent in suit and whether legal action will also be possible with a prospect of success, and in view of the corresponding serious preparation of the proceedings. 

IPPT20231211, UPC CFI, LD Düsseldorf, Ortovox Sportartikel v Mammut Sports
Ex parte provisional injunction under penalty of € 10.000 per product or € 30.000 per day and order to hand over devices, all subject to a security of € 500.000. Order to be served by claimant’s counsel. Direct use of the invention (article 25 UPCA). Indirect use of the invention (article 26 UPCA). Validity of the patent is sufficiently certain (article 62(4) UPCA, Rule 211(2) RoP). The fact that the patent in suit has not yet survived any adversarial legal validity proceedings does not preclude this. Even without such prior proceedings, the legal validity can be sufficiently secured. Summary examination of arguments brought in pending Swiss revocation proceedings. Urgency of the action (Rule 209(2)(b) RoP) The urgency required for the ordering of interim measures is only lacking if the injured party has been so negligent and hesitant in pursuing his claims that, from an objective point of view, it must be concluded that the injured party is not interested in enforcing his rights quickly, which is why it does not seem appropriate to allow him to claim interim legal protection (see also UPC_CFI 2/2023 (LK München), order of 19 September 2023, p. 84 f.).