#8 UPC series: Provisional measures in a nutshell

The legal sources for the legal framework and procedural aspects of provisional orders are (i) the Agreement on a Unified Patent Court (“UPC Agreement”) of February 19, 2013 (the full text of the agreement is accessible here); and (ii) the Rules of Procedure of the Unified Patent Court, as adopted by decision of the Administrative Committee on July 8, 2022 and entered into force on September 1, 2022 (the full text of the Rules of Procedure is accessible here—“RoP”).

More specifically: (i) art. 60 to 62 of the UPC Agreement; and (ii) Rules 205 to 213 of the RoP.

• UPC Provisional Orders

The UPC may issue the following provisional orders:

• injunction against a defendant, under threat, where appropriate, of a recurring penalty payment or an order that the continuation of the infringement may only take place against the provision of security intended to ensure compensation to the rights holder;
• seizure or delivery of the products suspected of infringing a patent so as to prevent their entry into or movement within commercial channels;
• precautionary seizure of movable or immovable property of the alleged infringer, including freezing bank accounts if the applicant shows credibly that the fulfilment of his or her claim for damages is doubtful;
• order to preserve evidence, which may include the detailed description, with or without the taking of samples, or physical seizure of the infringing products, and, in appropriate cases, the materials and implements used in the production and/or distribution of those products and the documents relating thereto;
• order to inspect premises, with such inspection to be conducted by a person appointed by the UPC in accordance with the RoP;
• freezing order, an order to a party not to remove from its jurisdiction any assets located therein, or not to deal in any assets, whether located within its jurisdiction or not.

The court may order ex parte provisional relief (without hearing the other party) in particular circumstances—specifically in cases where any delay is likely to cause irreparable harm to the applicant or where there is a demonstrable risk of evidence being destroyed.

The court may also order the applicant to provide adequate security for appropriate compensation for any injury likely to be caused to the defendant that the applicant may be liable to bear in the event that the court revokes the order for provisional measures. The court shall do so when interim measures are ordered without the defendant having been heard, unless there are special circumstances that compel it not to do so. The court shall decide whether it is appropriate to order the security to be paid via deposit or bank guarantee. The order shall be effective only after the security has been given to the defendant in accordance with the court’s decision.

• Summary Proceedings

Summary proceedings consist of two stages, a written procedure and an oral procedure, which may include an oral hearing of the parties or of one of the parties.

With regard to the written phase, an application for provisional measures (“Application”) may be filed by the applicant before or after main proceedings on the merits of the case have started before the court.

If the main proceedings is already pending, the same chamber dealing with the main action shall have exclusive jurisdiction to hear the application for interim measures. Otherwise, the applicant may choose a competent court in accordance with the general rules (either the local chamber, regional chamber, or central division).

The Application shall contain i) the details of the parties and of the patent, confirming that it is legally valid, with information about prior or pending proceedings relating to the patent. It also shall contain ii) an indication of the division that shall hear the action and iii) indication of the requested provisional measure(s), with explication of iv) the reasons why provisional measures are necessary to prevent threatened infringement, to block the continuation of alleged infringement, or to make such continuation subject to the provision of guarantees.

The applicant shall also indicate v) the facts and evidence relied on in support of the application and vi) a concise description of the action that will be undertaken before the court, including the facts and evidence that will be relied upon in support of the main proceedings on the merits of the case.

Should the applicant request that provisional measures be ordered without hearing the other party, the Application also shall contain vii) the reasons for not hearing the defendant, as well as information about any prior correspondence between the parties concerning the alleged infringement.

The applicant shall have a duty to disclose any material facts known to it that might influence the court in deciding whether to inform the defendant of the preliminary injunction application and give him or her the opportunity to submit written observations or to summon both parties directly to the oral hearing or even summon only the applicant to the oral hearing.

The Application is first formally examined by the Registry and then immediately forwarded by the presiding judge to the panel of judges (with the designation of the judge-rapporteur) or—in urgent cases—to a single judge.

The assigned panel or judge—the court—will examine the request on its merits. Without prejudice to the court’s decision on the Application for provisional measures, the court shall have the discretion to:

• inform the defendant and invite him/her to file an objection to the Application within a time period to be specified;
• summon the applicant to an oral hearing without the presence of the defendant; or
• summon the parties to an oral hearing.

If the court decides to involve the defendant in the debate, it will inform the applicant, who then has the option to withdraw the Application.

The court will also be able to simply reject the application, even without hearing any party.

• The Oral Hearing

When the court decides to summon the parties to an oral hearing, the date for the oral hearing shall be set as soon as possible after the date of receipt of the Application for provisional measures.

The court may order the parties to provide further information, documents, and other evidence before or during the oral hearing, including evidence to enable the court to make its decision.

Should the applicant be absent from the oral hearing without a reasonable excuse, the court shall reject the Application for provisional measures.

• The Decision

Before granting a provisional order, the court shall weigh the interests of the parties, taking into account in particular the possible damage that could be suffered by one of the parties due to the granting or rejection of the injunction.

With regard to the substantive requirements for the issuance of a provisional order, the urgency of the matter is not established as a necessary condition for granting an interim injunction: the legal framework merely states, as a bottom limit, that the court shall take into account any unreasonable delay in applying for an interim injunction. However, the absence of undue delay does not automatically mean that there is urgency. It could be argued that the mandatory balancing of interests suggests that an interim injunction can only be granted if it is urgent in order to prevent irreparable damage to the applicant because of significant consequences for the defendant’s business. Nevertheless, court practice on this issue remains to be seen.

The court’s decision on the Application for provisional measures shall be given in writing “as soon as possible.” If the court deems it appropriate, its decision may be given orally to the parties at the end of the oral hearing, prior to being provided in writing.

If the decision is issued without hearing the defendant, the defendant shall be given notice of the provisional measures without delay and, at the latest, immediately at the time of execution of the measures; the defendant may request a review of the decision.

• Appeal Against Provisional Measures and the Action on the Merits

A provisional measure can be appealed within 15 days of being served.

An appeal seeking to overturn such a measure does not prevent the continuation of parallel proceedings on the merits, but the court of first instance shall not render a decision on the merits of the case until the court of appeals has decided on the preliminary injunction appeal.

If proceedings on the merits are not yet pending, revocation of the preliminary injunction may be requested if the applicant does not file an action on the merits within 31 calendar days or 20 working days, whichever is longer.

• Protective Letters

A practical consideration: What can be done to avoid preliminary measures or to undo such measures once they have been granted? To prevent ex parte preliminary relief being obtained, or to at least be able to argue against the reasons put forward by the applicant, a party that considers it likely that an ex parte application for such relief will be filed against it should file a protective letter.

Rule 207 of the RoP explains what should be included in this document, which has to be filed with the Registry in the language of the patent in question. This provision states that the arguments in fact and in law—as well as the evidence that should convince the court not to grant the preliminary relief—”may” be mentioned.

The Registry will not keep a public register of all the filed protective letters. If an application based on the patent(s) mentioned in a protective letter is received, then the applicant will receive a copy of the protective letter—to allow the applicant to reconsider the application and withdraw it if necessary.

A protective letter “expires” six months after it has been filed unless a renewal fee is paid. A renewal fee will prolong the validity of the protective letter by another six months. Further extensions may be obtained upon payment of further extension fees.