CMS Expert Guide on Preliminary Injunctions in IP in Unified Patent Court

The UPC has competence over alleged infringement of patents only (European Patents and Unitary Patents and associated SPCs), which includes jurisdiction to grant PIs.

Current UPC case law does not explicitly state that a prior out-of-court warning letter is mandatory. However, if any prior correspondence or legal actions have taken place, the applicant is under a duty to disclose this information in their application, especially for ex parte requests.

While there is no fixed deadline, an application must be filed without unreasonable delay to demonstrate urgency. The timeframe for assessing unreasonable delay begins from the moment the applicant became, or should have become, aware of infringement with sufficient facts and evidence to file a promising legal action. If the applicant has been negligent or hesitated, the Court may find that the necessary temporal urgency is lacking, leading to dismissal of the application. UPC case law suggests the timeframe can be as short as one month however the Court of Appeal has occasionally accepted timeframes slightly more than one month.

PIs are designed to be accelerated summary proceedings due to the need for prompt protection of rights. In urgent cases, the judge can decide on the application with a reduced time-table, issuing a PI within days.

The Unified Patent Court Agreement (UPCA) does not explicitly prohibit the suspension of PI proceedings, however suspension is limited to very exceptional circumstances.

The applicant must provide reasonable evidence to satisfy the Court with a sufficient degree of certainty that they are entitled to initiate proceedings, that the patent is valid, and that infringement is occurring or imminent. The standard of proof requires it is at least more likely than not that the patent is valid and infringed. The burden of proof lies with the applicant, while the defendant bears the burden of proving patent invalidity.

Yes, it is possible to obtain an ex parte PI. This is typically granted in cases of extreme urgency where any delay is likely to cause irreparable harm or there’s a demonstrable risk of evidence being destroyed. 

Yes, costs are recoverable from the unsuccessful party. Cost compensation is not limited to decisions on the merits. However, if main proceedings are pending, costs related to representation and expert evidence may be assessed in the main action to avoid double assessment, though travel expenses exclusively related to PI proceedings may be awarded directly.

The Court may order the applicant to provide security for compensation to the defendant if the PI is later revoked or found to be unjustified. There is no mandatory requirement, even in ex parte cases, but if the defendant has not been heard this operates in favor of a security.

Appeal against a PI is possible within 15 calendar days of notification. The appeal can be based on both points of law and matters of fact. However, lodging an appeal against a PI does not automatically suspend its effect, unless the Courts decide otherwise.

The Court will make a decision within a reasonable time frame, considering the interests of both parties. 

A PI generally becomes immediately effective upon service. Where the Court orders provision of security, enforceability is suspended until the applicant provides the required security deposit.

To enforce compliance, the Court may impose recurring penalty payments payable to the Court for each violation or non-compliance with the PI. Additionally, the bailiff may be authorised to request assistance from the police for execution, in accordance with national law.

The counterparty can seek compensation for any injury caused if the PI is later revoked, lapses due to the applicant's actions or omissions, or if it is subsequently found that there was no infringement or threat of infringement. This compensation may be ordered by the Court upon the defendant’s request.

Further proceedings on the merits are generally required, as the PI is a provisional measure based on summary assessment. The Court, upon request of the defendant, sets a timeframe (e.g., 31 calendar days or 20 working days) for the applicant to institute main proceedings; failure to do so may lead to revocation of the PI. A final permanent injunction can only be granted after the decision on the merits makes a finding of patent infringement.