Recent decisions in the local divisions of the European Unified Patent Court demonstrate that the UPC system is patent (plaintiff) friendly and is prepared to grant emergency injunctions at short notice to stop alleged infringers from showcasing products on trade fairs. Indeed, the first preliminary injunction issued by the UPC was from the Düsseldorf court to stop selling, importing and storing the allegedly infringing bicycles in Germany, the Netherlands, France and Italy and requested that the alleged infringer surrender the bicycles being exhibited at the Eurobike trade fair, to prevent further marketing of the bicycles, as we have already reported here.
The UPC is not following the previous practice in (some) German courts which insisted that a patent should have already overcome a challenge to its validity before granting an emergency injunction. This practice had already been successfully challenged before the UPC came into effect in the Phoenix Contact decision of the European Court of Justice, reported here, and it is clear that the Unified Patent Court will not be following this practice.
Emergency injunctions can only be based on European Unitary Patents (registered since June 2023) or on those older European Patents which have not been “opted out” of the UPC system. It is possible for patent holders to withdraw the request to opt out of the UPC system. This reversal of the opt-out needs, however, to be made before the request for the emergency injunction is made.
The request for an injunction requires detailed preparation and should preferably be prepared in advance of the trade fair if an infringement is anticipated. The court will want to see details of the infringement and an analysis of the claims of the granted patent compared to the allegedly infringing item. The court will issue an order instructing the owner of the booth at the trade fair to remove the item and this order is enforceable with the help of a local bailiff and, sometimes, the organizers of the trade fair.
The court can issue the so-called ex-parte injunction without ordering a hearing if the case is well-prepared. Such surprise attacks can be extremely effective. One defence against such ex-parte injunctions is to file a “protective letter” with the court in advance to explain why there is no infringement and request a hearing before such an injunction is issued. Such protective letters are not always effective, as we have highlighted in a previous blog contribution.
At Sonnenberg Harrison, we have extensive experience in enforcing patent rights as well as defending alleged infringers at trade fairs. Our experienced team of European patent litigators can prepare your case and represent you in a dispute. Feel free to get in touch if you have any questions.
