Article 62

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Provisional and protective measures

1.   The Court may, by way of order, grant injunctions against an alleged infringer or against an intermediary whose services are used by the alleged infringer, intended to prevent any imminent infringement, to prohibit, on a provisional basis and subject, where appropriate, to a recurring penalty payment, the continuation of the alleged infringement or to make such continuation subject to the lodging of guarantees intended to ensure the compensation of the right holder.

2.   The Court shall have the discretion to weigh up the interests of the parties and in particular to take into account the potential harm for either of the parties resulting from the granting or the refusal of the injunction.

3.   The Court may also order the seizure or delivery up of the products suspected of infringing a patent so as to prevent their entry into, or movement, within the channels of commerce. If the applicant demonstrates circumstances likely to endanger the recovery of damages, the Court may order the precautionary seizure of the movable and immovable property of the alleged infringer, including the blocking of the bank accounts and of other assets of the alleged infringer.

4.   The Court may, in respect of the measures referred to in paragraphs 1 and 3, require the applicant to provide any reasonable evidence in order to satisfy itself with a sufficient degree of certainty that the applicant is the right holder and that the applicant's right is being infringed, or that such infringement is imminent.

5.   Article 60(5) to (9) shall apply by analogy to the measures referred to in this Article.

 

Case law

 

Court of Appeal

 

IPPT20240226, UPC CoA, AIM Sport v Supponor
Parties requested to comment on non-compliance with Rule 224.1(b) RoP, providing that a Statement of Appeal of an order has to be filed within 15 days of service of an order referred to in Rule 220.1(c) RoP. Under “Information about Appeal” the CFI has indicated that the decision could be appealed within two months of the date of notification of the decision, referring to Article 73(1) UPCA and Rule 220.1(a) and Rule 224.1(a) RoP concerning an appeal against a decision, such as a decision in an infringement action, while in one of the two actions AIM sought a preliminary injunction order pursuant to Article 62 UPCA.

 

IPPT20240215, UPC CoA, Meril v Edwards Lifesciences
Court fee of € 11.000 is payable for appeal under Rule 220(1)(a) RoP against an order determining which party is to bear the costs of the proceedings in the context of the dismissal of an application for interim measures under Rule 360 RoP. (Rule 228 RoP). In the absence of a specific fee, the fee is to be paid for the case that is most comparable to the present case according to the system of the table of fees. The Table of Fees determines the fee for an appeal under Rule 220.1(a) RoP based on the nature of the action or application decided by the Court of First Instance. Under this system, the provision providing for a fee of €11,000 for an appeal under Rule 220.1(c) RoP concerning a request for provisional measures under Article 62 UPCA applies mutatis mutandis to the present appeal proceedings. This is because these appeal proceedings also concern an appeal against an order terminating proceedings relating to a request for provisional measures under Article 62 UPCA

 

IPPT20240226, UPC CoA, Nanostring v 10x Genomics II

The validity of the patent at issue is not established with a sufficient degree of certainty for the [preliminary] injunction requested to be issued (Rule 211 RoP, Article 62 UPCA, Article 9(3) Enforrcement Directive). A sufficient degree of certainty is lacking if the court considers it on the balance of probabilities to be more likely than not that the patent is not valid. Standard of proof regarding order for provisional measures issued by way of summary proceedings. Since the order for provisional measures is issued by way of summary proceedings pursuant to R. 205 et seq. RoP, in which the opportunities for the parties to present facts and evidence are limited, the Court of Appeal agrees with the Court of First Instance that the standard of proof must not be set too high, in particular if delays associated with a reference to proceedings on the merits would cause irreparable harm to the proprietor of the patent [...]. On the other hand, it must not be set too low in order to prevent the defendant from being harmed by an order for a provisional measure that is revoked at a later date [...]. The burden of presentation and proof for facts allegedly establishing the entitlement to initiate proceedings and the infringement or imminent infringement of the patent, as well as for all other circumstances allegedly supporting the Applicant's request, lies with the Applicant, whereas, unless the subject-matter of the decision is the ordering of measures without hearing the defendant pursuant to Art. 60(5) in conjunction with Art. 62(5) UPCA, the burden of presentation and proof for facts concerning the lack of validity of the patent and other circumstances allegedly supporting the Defendant's position lies with the Defendant. The aforementioned allocation of the burden of presentation and proof in summary proceedings is in line with the allocation of the burden of presentation and proof in proceedings on the merits.

 

Court of First Instance

 

IPPT20240430, UPC CFI, LD Düsseldorf, 10x Genomics v Curio Bioscience
Provisional cease and desist order, subject to Applicant providing € 2 million security (Article 62 UPCA, Rule 211 RoP).Non-compliance with the substantive requirements for an application for provisional measures (Rule 206.2(d) RoP) may be to the detriment of the Applicant. A possible infringement of R. 206.2(d) RoP does not therefore lead to the Application being inadmissible. Rebuttable presumption that a person registered as the patent proprietor in the respective national register is entitled to be registered (Rule 8.5(c) RoP, Rule 211.2 RoP, Article 47 UPCA,).Sufficient certainty of the validity of the patent for the ordering of provisional measures (Article 62 (4) UPCA, Rule 211.2 RoP). No award of damages possible in proceedings for provisional measures (article 62 UPCA, Rule 211(1) RoP). The content of provisional measures is exhaustively regulated in Art. 62 UPCA in conjunction with R. 211(1) RoP. The awarding of damages is not mentioned there. Its assertion is therefore reserved for the main proceedings. No security for legal costs of Defendant in urgent proceedings (Article 69(4)) UPCA, Rule 158 RoP, Rule 211.1(d) RoP). No reason for a decision on costs in proceedings for the ordering of provisional measures if, as in this case, a main proceedings follows the urgent proceedings. Unintended regulatory gap: interim award of costs  in favour of Defendant not provided for in urgent proceedings (Rule 118.5 RoP, Rule 211.1 RoP)

 

IPPT20240409, UPC CFI, LD Düsseldorf, Ortovox Sportartikel v Mammut Sports
Provisional measures do not require risk taking by applicant but reliable knowledge of relevant facts (Article 47 UPCA, Article 62 UPCA, Rule 213 RoP). The applicant only needs to call upon the court if he has reliable knowledge of all the facts that make legal action in the proceedings for an order for provisional measures promising and if he can make these facts credible: that the applicant is entitled to initiate the proceedings, that the patent in question is valid and that its right is infringed or threatened to be infringed. 

 

IPPT20240129, UPC CFI, LD Düsseldorf, 10x Genomics v Curio Bioscience
Request, with the consent of the parties, to assign an additional technically qualified judge to the panel  for provisional measures application (article 8(5) UPCA). Appropriate because of the requested provisional measures, which requires examining reasonable doubts as to the validity of the patent in the technically demanding field of genetic engineering. The ordering of provisional measures can only be considered if the legal validity of the patent in dispute is sufficiently secured (Article 62 (4) UPCA in conjunction with Rule 211(2) RoP. It is therefore incumbent on the panel to obtain a sufficient picture of the legal validity on the basis of the parties' submissions and, in particular, to examine whether any objections raised against the validity of the patent in suit are likely to give rise to reasonable doubts as to the validity of the patent in suit (UPC_CFI_452/2023 (LK Düsseldorf), order of 11 December 2023 [IPPT20231211]). Although the involvement of a technically qualified judge ex officio is only mentioned in the Rules of Procedure in Rule 34 RoP and thus in the provisions on the main proceedings, Article 8(5) UPCA grants the panel in general and thus also in summary proceedings the right, after hearing the parties, to involve such a judge on its own initiative if it considers this appropriate (see also UPC_CFI_2/2023 (LK Munich) [IPPT20230919], UPC_CFI_214/2023 (LK Helsinki [IPPT20231020]).

 

IPPT20240125, UPC CFI, LD Düsseldorf, Ortovox Sportartikel v Mammut Sports
Request at panel’s initiative for a technically qualified judge in provisional measures proceedings (Rule 211(2) RoP, Article 8(5) UPCA, Article 62(4) UPCA). Sensible and advisable to also involve technically qualified judge already in the present proceedings because the respondents deal extensively with the legal status of the patent in dispute in support of their request for examination. 

 

IPPT20231220, UPC CFI, LD Munich, SES-Imagotag v Hanshow
Provisional measure rejected: no sufficient certainty (“ausreichender Sicherheit”) that the products infringe the patent. if the antenna can be assigned to at least a significant part of the rear housing surface, a violation cannot be established (article 62 UPCA). 

 

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). Element of suppression (“Unterdrückung”) is fulfilled. [...]. 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.).

 

IPPT20231205, UPC CFI, LD Munich, 10x Genomics v Nanostring

Recurring penalty payments not subject to enforcement requirements under national law nor notification by the claimant (Article 82(4) UPCA, Rule 118(8) RoP, Rule 354 RoP). Non-compliance with the terms of a UPC order (article 62 UPCA) is sanctioned with a penalty payment on the basis of article 82(4) UPCA alone and not subject to further enforcement requirements existing under national enforcement laws of contracting member states. (see also Local Division Düsseldorf,  IPPT20231018, myStromer v Revolt Zycling). Rule 118(8) RoP – “orders shall be enforceable only after the claimant has notified the Court which part of the orders he intends to enforce” – does not apply to orders under Article 62 UPCA (provisional and protective measures). According to its clear wording ("The orders referred to in paragraphs 1 and 2(a)..."), Rule 118.8 of the Rules of Procedure does not apply to orders under Art. 62 UPCA.

 

IPPT20230919, UPC CFI, LD Munich, 10x Genomics v Nanostring

Provisional measure (article 62 UPCA, Rule 211 RoP). Sufficient degree of certainty that the patent is valid. Prevailing likelihood (“überwiegende Wahrscheinlichkeit”) – more likely than not – is required and sufficient. No unreasonable delay in seeking provisional measures. Applicants filed the request for an injunction on June 1, 2023, the earliest possible date for requesting provisional measures regarding a unitary patent with the UPC. The enforcement of a European patent without unitary effect must be carried out separately in all member states concerned and is therefore not an equivalent means of enforcing rights in the case of infringement compared to the enforcement of a unitary patent before the UPC. Interests of and potential harm for either of the parties. The Local Board considers that the interest of the right holder in not having his rights infringed outweighs the interest of the potential infringer in securing market shares now through the continuation of the infringement, which he can no longer obtain later through a possible licence agreement. The damage potentially suffered by the applicants as a result of a continuation of the infringing acts by the defendants is also difficult to compensate financially, as the acquisition transactions have a long-term effect; their reversal is much more difficult for the applicants than for the defendants who are contractually involved in these transactions.

 

IPPT20230622, UPC CFI, LD Düsseldorf, myStromer v Revolt Zycling

Ex parte provisional injunction regarding Germany, the Netherlands, France and/or Italy and seizure of goods suspected of infringement.(article 62 and 29 UPC Agreement, Rules 206, 207, 209, 211 and 212 Rules of Procedure). Direct and literal infringement of the patent by the contested embodiment not substantially disputed in the protective letter. No exhaustion because respondent is not licensed to create from components supplied by Fairy Bike a combination falling within the scope of protection of the patent. Urgency of the action due to the already running leading European trade fair "Euro Bike 2023" and no earlier knowledge of detailed technical design of contested embodiment evident. Only provisional award of court costs, since the applicant did not explain in detail the amount of its costs quantified at EUR 16.000. Provisional measures granted without hearing the defendant because of likelihood of irreparable harm. It is obvious that the exhibition of the contested embodiment at this trade fair can lead to a hardly reversible loss of sales or market shares of the applicant. The products of both parties are substitutable, direct competitors.