European Patent Litigators Association

Big Bang in Munich – Report on 113 page decision ordering provisional measures in the case 10x Genomics vs. NanoString, published by the Munich Local Division of the UPC within three weeks of the oral hearing.

  1. Introduction

On 5 and 6 September 2023, the hearing in the case 10x Genomics vs. NanoString took place before the Munich Local Division of the UPC. On 19 September 2023, the decision to order provisional measures was announced, and on 28 September 2023, the reasoned decision was published on the UPC’s website. The decision shows how efficient the new court system can be.

According to Art. 76(2) UPCA, substantive decisions “may only be based on grounds, facts and evidence, which were submitted by the parties or introduced into the procedure by an order of the Court and on which the parties have had an opportunity to present their comments.” The court must therefore decide on the facts submitted to it by the parties.

In the “e-bike” case decided by the Düsseldorf Local Division (, the Defendants’ submission on non-infringement and lack of validity was so unsubstantiated that the court only had to deal with these issues in a very cursory manner.

In the present case, the Defendants presented a multitude of arguments which, in their opinion, spoke against the ordering of provisional measures: The Munich Local Division was not competent, the patent was not infringed, the patent was not valid because of inadmissible amendment, insufficient disclosure, missing novelty and inventive step, the Applicants did not have the right to sue, there was no need for legal protection, the Defendants could rely on a grant of a licence, the enforcement of the claims was contrary to antitrust law, etc. The Applicants contested this in detail.

According to Art. 42(1) UPCA, the court “shall deal with litigation in ways which are proportionate to the importance and complexity thereof”. It can hardly be questioned that the very comprehensive judgement, which, as far as can be seen, addresses and deals with all objections of the Defendants, is appropriate with regard to the complexity of the present proceedings.

Note on the designation in this report:

The UPCA designates paragraph y of an Article x as “Art. x(y)”, i. e. for example “Art. 47(2)”. The Rules of Procedure (RoP) of the UPC, on the other hand, designate a paragraph y of a Rule x as “Rule x.y”, i. e. for example “Rule 212.3”. The present report follows these guidelines. Page numbers refer to the judgment under discussion.

  1. Details of the proceedings:

Case Number.: UPC CFI 2/2023

Application: The application was filed with the Munich Local Division on 1 June 2023.

Court: Dr. M. Zigann (DE, Chairman), T. Pichlmaier (DE, Rapporteur) A. Kupecz (NL, legally qualified judge having an MSc in Molecular Biology) and E. Enderlin (FR, technically qualified judge in the field of Biochemistry)

Patent Proprietor: President and Fellows of Harvard College (US)

Applicants: 10x Genomics, Inc. (US) – Applicant No. 1) – and the Patent Proprietor – Applicant No. 2) –

Defendants: NanoString Technologies from US – Defendant No. 1) -, DE – Defendant No. 2) – and NL – Defendant No. 3) –

Language of the Proceedings: German

Patent in suit: EP 4 108 782 B1 (EP’ 782), entitled “Compositions and methods for analyte detection”. The patent, filed on 27 April 2022, was granted on a divisional application of EP 18173059.9, which is itself a divisional application of EP 12860433.7. The decision to grant is dated 11 May 2023, and the grant was published on 7 June 2023. Patent EP’ 782 is a European patent with unitary effect. Defendant No. 1 filed an opposition against the patent with the EPO on 18 July 2023.

The patent has 16 process claims, with process claims 2-16 each referring back directly or indirectly to the only independent claim 1.

The Applicants had attacked three embodiments:

Embodiment 1: A device with which biological samples, such as fixed cells and tissue sections, can be automatically analysed for the presence of certain analytes, namely RNA and proteins.

Embodiment 2: The detection reagent that can be used to detect RNA.

Embodiment 3: A probe that can be used for the detection of RNA and for the detection of proteins.

  1. Competence of the Munich Local Division (page 40)

The Applicants had filed two actions for injunction against the Defendants under patent EP 2 794 928 B1 granted on the parent application with the Munich District Court in March 2022, which were granted by judgment of 17 May 2023. The Applicants are enforcing these judgments. Therefore – according to the Defendants – there would be no acts of infringement in Germany and thus no competence of the German Local Division.

The court takes a different view: Competence is governed by Art. 33(1)(a) UPCA. Patent-infringing products had been offered for sale on the internet for shipment to the member states of the EU and thus also to Germany. Furthermore, according to announcements submitted as exhibits, promotional events at research institutions in Germany were planned. The Applicants’ conclusive submission was sufficient to establish competence. Whether this actually results in a patent infringement in the end is not decisive for the answer to the question of competence.

  1. Admissibility of the application (page 41)

a) Formal requirements of Rule 206

The Defendants argued that the application had to be dismissed as inadmissible if the formal requirements of Rule 206 are not all fulfilled. According to Rule 208.1, the Registry is responsible for examining the formal requirements. If it finds deficiencies, it notifies the applicant under Rule 16, who must remedy the deficiencies within a period of 14 days. If the deficiencies are not remedied, a decision by default under Rule 355 may indeed be given upon request against the applicant.

In fact, however, the Registry had not identified any deficiencies and no request was made by the Defendants to dismiss the application for ordering provisional measures as inadmissible.

The Court does not follow the Defendants. The examination as to formal requirements is only to determine whether the required information has been provided. The examination of the content of the information, on the other hand, is the responsibility of the court. Even the absence of the subsequently submitted exhibits at the time of filing the application does not render the application inadmissible. An order for provisional measures without hearing the opposing party had not been requested, and according to Rule 211.2 the court may order the submission of missing evidence after the filing of the application, from which it follows that it does not necessarily have to be submitted with the application.

b) Need for legal protection (page 45)

The Defendants argued that due to the enforceable judgement in Germany on the parent patent EP’ 928 against the same embodiments, the application lacks the legal protection requirement. The court does not agree with this either: Since the requested order has effect for all participating EU states in the case of a patent with unitary effect (as opposed to the effect of the judgement only in Germany), there is a general need to go to the UPC. Moreover, the patents in question were different and thus the subject matter of the dispute was different.

  1. Eligibility to request (right to sue) of the two Applicants (page 46)

Applicant No. 2) is eligible to file an application as the owner of the patent in suit. As the Applicant No. 2) has used public funds in the USA for the research work that led to the teaching of the patent in suit, it must comply with the legal requirements of the so-called Bayh-Dole Act. The Applicants argued that they had done so, and the Defendants – according to the court – were unable to refute this.

Since the Defendants’ objection thus already failed on the facts, the court was unfortunately unable to answer the question of whether the formal position as Patent Proprietor in the register is decisive for the assertion of a patent before the UPC, or whether the substantive ownership is decisive.

For its right to sue, Applicant No. 1) invoked an exclusive licence to the patent in suit granted by Applicant No. 2). According to a submitted judgement of the District Court of Delaware of 10 July 2023 between the same parties (the judgement is available on the US Court’s website), this is not admissible as the Bayh-Dole Act only permits simple, but not exclusive licences.

However, according to the court, Applicant No. 1) is nevertheless entitled to file an application, since under Art. 47(3) UPCA, the holder of a non-exclusive licence is also entitled to bring an action before the court if he has previously informed the patent proprietor and the licence agreement permits this. According to Art. 47(4) UPCA, the patent proprietor may join an action brought by a licence holder. As these requirements were met in the present case, the court confirms that both Applicants are entitled to file the application.

  1. Subject-matter of the patent in suit – Claim interpretation (page 48)

The Rules of Procedure require, in Rule 13.1(n), an interpretation of the patent claim by the applicant in the statement of claim and, according to Rule 24(g), if applicable, a statement by the defendant in the statement of defence. In the case of a counterclaim for revocation, the situation is different: Here, Rule 25.1(b) requires the interpretation of the patent claim by the defendant, and in the case of a revocation action under Rule 44(e) by the claimant. The rules on provisional measures do not explicitly require the interpretation of the patent claim in the parties’ pleadings, but it needs no further discussion that the interpretation of the claim is indispensable for discussing the validity of the patent and the issue of infringement.

The court deals very comprehensively with the subject-matter of the patent in suit and the interpretation of (the only independent) claim 1. It starts from the prior art discussed in the patent in suit – as is, for instance, in line with German legal practice -, describes, building on this, the teaching of the patent in suit in detail and gives a feature analysis of claim 1 in German, the language of the proceedings.

The court then discusses its understanding of the features in dispute of this claim with regard to interpretation under Article 69 EPC on the basis of the wording of the claim and the explanations in the description and the drawings.

  1. Validity

a) Obligation of the court to examine validity (page 58)

According to Rule 211.2, the court may request the applicant to “provide reasonable evidence to satisfy the Court with a sufficient degree of certainty” that, inter alia, “the patent in question is valid“. In a different context, namely when exercising its discretion according to Rule 209.2(a) whether to inform the Defendant about the application , “the court shall in particular take into account 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.”

In the present case, the Court agrees with the Defendants that these rules impose an obligation on the Court to independently assess the legal status of the patent in suit.

b) “Sufficient degree of certainty” standard

According to Rule 211.2 (see above), the court must be satisfied “with a sufficient degree of certainty” of the validity of the patent in suit. After weighing various levels of probability (certain, predominant, considerable, high, near to certainty), the court comes to the conclusion, with reference to the time limit for provisional measures under the UPCA and the nature of summary proceedings, that a predominant probability is necessary, but also sufficient, for the validity of the patent in suit. In the commentator’s understanding, this means, in mathematical terms, a probability of at least 51% in favour of the validity of the patent. According to logic, it follows vice versa that “sufficient certainty” can no longer be assumed if the probability of revocation is 51% or more.

The court rejects the Defendants’ argument that according to German national case law, the revocation of the patent does not have to be predominantly probable, but only possible, with the remark that “this case law on national procedural rules” is “not relevant in the scope of application of the UPCA and the RoP”.

At least the Munich Local Division of the UPC thus seems to be convinced that the UPC Rules of Procedure are to be interpreted without recourse to national case law.

c) Presumption of validity – individual examination

The court disagrees with the Defendants’ view that the alleged statistically recorded “high revocation rate” of European patents should also be taken into account when examining the validity of the patent, which was probably intended to mean that European patents are subject to the presumption of lack of validity.

The court rightly points out that this revocation rate only concerns that small part of the granted patents that are actually challenged in validity proceedings and that no statement for the unchallenged patents follows from this. In addition, according to Rule 211.2, the court had to consider the individual case and could not rely on statistical findings.

Not surprisingly (the 21st chamber of the Regional Court of Munich chaired by Judge Pichlmaier had formulated the referral question), the court also refers to the decision of the ECJ, ref. C-44/21, of 28.04.2022. As is well known, the ECJ, whose case law is to be observed by the UPC according to Art. 21 UPCA, stated there (para. 41) that for “European patents a presumption of validity applies from the date of publication of their grant”.

c) Burden of proof for validity (page 59)

On the burden of proof and presentation for validity, the Court cites Art. 54 UPCA, according to which the burden of the proof of facts shall be on the party relying on those facts. The above-mentioned Rule 211.2, according to which the court may request the applicant to submit evidence of validity, is seen by the court as granting a discretion that comes into play when the defendant’s submission gives rise to doubts as to the legal status. Without prejudice to the Applicant’s obligation under Rule 206.2 to present evidence on the validity of the patent in suit, the Applicant, according to the Court, “does not bear the burden of proving the validity of the patent in suit, at least initially”.

d) Skilled person – composition of the court (page 61)

The Court defines the relevant person skilled in the art in accordance with the Defendants as “a chemist or biologist with a university degree in biochemistry who has experience in the field of detection strategies for biomolecules”.

The court also highlights the strength of the UPC, vis-à-vis national jurisdictions that do not provide for technically qualified judges on the bench: “The Local Division has a relevantly technically qualified judge. Also, one of the legally qualified judges has a degree (MSc) in molecular biology.”

e) Inadmissible amendment (page 61)

As expected, the Local Division follows the generally accepted “gold standard” of the Enlarged Board of Appeal of the EPO as the standard for assessing inadmissible amendment, according to which an amendment “may only be made within the scope of what the person skilled in the art can directly and unambiguously derive from the entirety of these documents as originally filed, taking into account the general knowledge of the art – objectively and in relation to the filing date”.

Referring to the interpretation of the patent claim discussed in the chapter on interpretation, the court rejects the argumentation of the Defendants in this respect, inter alia, as “obviously incompatible with the technical meaning of the method according to the claim, which is clearly expressed by its wording”.

f) Novelty (page 63)

The court further assumes “with a sufficient degree of certainty” that the patent in suit will not be revoked for lack of novelty.

To this end, the court compares in detail the teaching of the prior art with the teaching of the patent in suit and explains the differences that establish novelty. As far as the Defendants argue with the preliminary opinion of the German Federal Patent Court in the revocation proceedings against the parent patent, the Court refers to the differences in the claim wording, which preclude a transfer of the result of the examination of novelty found there to the present case.

g) Inventive step – closest prior art (page 65)

As to the selection of the prior art to be used for the examination of inventive step, the court states:

“The (closest) prior art to be taken into account for the determination of lack of inventive step is generally a prior art document which discloses a subject-matter which has been developed for the same purpose or with the same aim as the claimed invention and has the most important technical features in common with the claimed invention, i.e. which requires the fewest structural changes. An important criterion in the choice of the most successful starting point is the similarity of the technical problem. Aspects such as the designation of the subject-matter of the invention, the formulation of the original problem as well as the intended use and the effects to be achieved should generally be given more weight than a maximum number of identical technical features”.

The court thus expressly opposes a schematic definition of the closest prior art, which depends solely on the number of identical features.

h) Inventive step – obviousness (page 65)

The court then examines whether the publications D8, D27 and D23 cited by the Defendants for this purpose, taken individually or in combination, render the subject-matter of the claim obvious. In doing so, the court examines both whether the skilled person had an incentive to act in a certain way (e. g. page 62, 2nd para.) and whether the skilled person would actually have done so (page 69, 2nd para.). The court does not apply the problem-solution approach, but examines whether the person skilled in the art had reason to use the teaching of the respective documents to further develop the prior art.

i) Insufficient disclosure (page 69)

According to the court, insufficient disclosure is given “if serious doubts, substantiated by verifiable facts”, exist “that a skilled reader of the patent would not be able to carry out the invention on the basis of his general knowledge of the subject-matter.” The wording “doubts substantiated by verifiable facts” is found verbatim in the case law of the Boards of Appeal of the EPO, e. g. in decision T 19/90 – Onco-Mouse (OJ EPO 1990, 476), point 3.3 of the grounds. However, the court does not refer to this case law.

For each of the arguments put forward by the Defendants, the Court examines whether the skilled person is able to carry out the teaching of the claim on the basis of the explanations in the patent specification and his technical knowledge and concludes that none of these arguments can give rise to doubts as to sufficiency of disclosure.

  1. Infringement

a) Direct infringement (page 71)

In the Court’s view, the Defendants infringe the protected method by applying it themselves in their laboratory in Amsterdam and by offering to apply the method to third parties.

To the extent that the Defendants object that feature 2.2.1 is not realised, the Court considers that this is based on an incorrect interpretation of the patent claim. According to the interpretation made by the court, this feature is used.

b) Execution of method steps outside the scope of the UPCA (page 78)

The Defendants contest infringement with the argument that some steps of their method are carried out outside the scope of the UPCA on a cloud-based basis. This, as the court finds, does not lead out of infringement, as this data analysis does not form part of the teaching of the patent claim, but only comes into play once the method steps of the claim have been gone through.

c) Indirect infringement (page 80)

In addition to direct infringement (Order A.I, page 104), the Applicants also allege contributory infringement by means of the distribution of devices (Order A.II, page 106), of detection reagents (Order A.III, page 108) and of decoder probes (Order A.IV, page 109), each of them being suitable for carrying out the method according to the patent.

Since the attacked embodiments 1 (device) and 3 (probe) can be used not only for the detection of RNA, but also for the detection of proteins, according to the court, the question of an absolute injunction did not arise here, however. Instead, the court orders a warning to be placed on the first page of the instruction manual, the shipping documents and the packaging “conspicuously and eye-catchingly”, stating that the device may not be used without the consent of Applicant No. 2) for RNA detection. Furthermore, the Defendants must impose a contractual penalty on the customers to be paid to the Applicant No. 2) if they use the device for the detection of RNA without the Applicant’s consent. The court also considers a corresponding warning to be necessary for the distribution of probes.

d) “Discontinuation” of the infringement (page 82)

The Defendants have requested, inter alia, that the use of the patented method and its offer be “discontinued”. The Court understands this request as a remedy obliging the Defendants to recall and sees no legal basis for this in the UPCA. The Application is therefore dismissed to that extent.

Commentator’s note: This concerns the ordering of provisional measures; in the context of proceedings on the merits, such a request can be made under Art. 64(2)(b) UPCA. In addition to the recall, the plaintiff may also request the permanent removal of the products from the distribution channels (d) and the destruction of the products and/or the materials and devices concerned (e) in the main proceedings.

  1. Wording of the requests (page 82)

The court then examines whether the other requests made are drafted in accordance with the UPCA and, in particular, with the Rules of Procedure. In substance, the issue is whether the requests for injunctions may be formulated according to the wording of the patent claims or whether they must be concretised in terms of the challenged embodiment.

According to the court, Art. 62(1) UPCA grants “a great freedom (…) to prohibit the continuation of infringements”. It was therefore permissible to formulate the requests according to the wording of the claim.

According to the Defendants, however, it is not permissible to exclude alternatives marked with “or” from the request, as this would assert a claim version that is impermissibly limited compared to the granted version. As expected, however, the court does not see a problem with this.

The court also considers it admissible that the Applicants filed auxiliary requests to the requests for injunctions at the oral proceedings following a suggestion by the court and refers to Art. 42 UPCA with the headline “Proportionality and fairness”.

  1. Necessity of ordering provisional measures (page 84)

According to Rule 206.2(c), the applicant must show why provisional measures are necessary to prevent a threatened infringement or to forbid the continuation of an alleged infringement. Under Rule 209.2(b), the court further considers – in the context of exercising its discretion whether to inform the Defendant about the application – the urgency of the action. Under Rule 211.3, the court weighs the interests of the parties and the damages they may suffer from the granting or refusal of the injunction. Under Rule 211.4, the court also takes into account “unreasonable delay in seeking provisional measures”.

Thus, according to the court, both factual and time-related circumstances are relevant in assessing the necessity of granting provisional measures.

a) Urgency – unreasonable delay

In the present case, the court considers the question of time-related circumstances to be easy to answer: The patent was granted on 11 May 2023, the application was filed on 1 June 2023, i. e. at the earliest possible point of time after the entry into force of the UPCA. There can therefore be no delay in filing the application.

The court rejects the Defendants’ argument that the Applicants had shown that there was no urgency by negligently enforcing the parent patent before 1 June 2023 with a very fundamental consideration: The creation of the UPC and the EP patent with unitary effect would not have been necessary if adequate enforcement had been possible without it. It was clear from the considerations in the UPCA that the contracting states did not see it that way.

Moreover, the Applicant No. 2 had accelerated and not delayed the enforcement of rights by the possibility of uniform enforcement existing with the unitary patent and the UPC.

b) Potential damages (page 88)

The court follows the Applicants’ submission that they are threatened with damages if the injunction is not granted, as Defendants’ products could then permanently block the market. In the opinion of the court, the damages caused by the actions of third parties brought into play by the defendants are not to be taken into account, since Art. 62 UPCA only deals with the balancing of the interests of the parties against each other.

c) Factual necessity (page 89)

The Applicants had submitted that customers who purchase the apparatus for carrying out the process from the Defendants are bound to purchase the detection reagents and decoder probes from the Defendants for many years. According to an expert report submitted by the Defendants themselves, this results in a “mirror image risk” for both parties, depending on whether the application is rejected or awarded. The parties therefore ultimately agree on the distribution of risk.

d) Alleged grant of licence (page 90)

In the District Court of Delaware’s judgment of 10 July 2023, cited above, the US court considered whether NanoString was entitled to claim breach of the contract between NIH (National Institute of Health) and Applicant No. 2. According to Judge Matthew F Kenelly, this was only possible if NanoString was a third-party beneficiary of the contract. This is denied by the US court and the Munich Local Division of the UPC agrees with this opinion.

The Defendants have submitted a legal opinion on possible legal remedies against the decision of the US court, which, however, does not convince the court for various – comprehensibly explained – reasons.

e) Licence claim under US competition or US antitrust law (page 92)

In the opinion of the court, the Defendants’ argument that they are entitled to a licence claim under US competition or antitrust law is a mere legal assertion which is not based on a court decision of a US court in favour of the Defendants. Moreover, the court misses concrete explanations in the submitted expert opinion on the facts of the case at hand and why such a legal claim should also extend to the territory of the contracting states of the UPCA.

f) Licence claim under EU antitrust law – no dominant market position of the Applicants

With regard to a possible licence claim under EU antitrust law, the court found that the Defendants, who had to prove their case, had not sufficiently presented the evidence of the Applicants’ alleged dominant position and the abuse of such a dominant position, which would be a prerequisite for a licence claim. Moreover, according to the court, the Defendants’ assertion that the Applicants’ patents were not legally valid contradicted the assumption of a dominant position.

Although the Applicants – according to the court – claimed the superiority of the patent-protected technology, which could lead to market dominance, the Defendants countered this with their argument that the challenged embodiments were technologically unique and protected by numerous patents. Thus, a market dominance could not be assumed. Furthermore, the court referred to the nature of the summary proceedings and to the brief submissions of the parties, which made a decision on the question of market dominance impossible.

g) No abuse of the market power by the Applicants (page 96)

In the court’s opinion, a licence claim under EU antitrust law – irrespective of the question of market dominance – is also not given because there is no abuse by the Applicants.

In this regard, the court refers to the decision of the ECJ in Case C-170/13 (Huawei vs. ZTE) on the interpretation of Article 102 TFEU. However, this concerned the constellation of SEPs in which the patent proprietor made a FRAND declaration in return for inclusion in a standard. In the present constellation, on the other hand – assuming a dominant position of the patent proprietor – the Defendants would have to make a concrete licence offer, which the Defendants did not do.

The licence offer made at the oral proceedings was too late and, moreover, only concerned the German national part of the parent patent EP’ 928 and its divisional patents, which, according to the court, is not possible in the case of a unitary patent. Moreover, no settlement was offered for the past.

h) Injunction is not disproportionate (page 99)

The Defendants have argued that an injunction is disproportionate because

  1. the “challenged process is an entirely subordinate part of a larger, complex product”,
  2. Applicant No. 2 as a Non-Practicing Entity (“NPE”) had no protectable interest in enforcing an injunction, as it was only pursuing monetary interests,
  3. the challenged embodiments were non-substitutable and thus of irreplaceable importance for research into a large number of serious, life-threatening diseases,
  4. the research activities of third parties were adversely affected,
  5. the facts to be assessed were unsuitable for ordering provisional measures due to their complexity.

On the first point, the court misses a corresponding concrete factual submission and also sees no legal principle in the UPCA to the effect that rights of third parties may be infringed by a complex product without entailing an injunction. Regarding point 2, in the court’s opinion it is precisely financial damage that justifies the issuance of an injunction, so that this argument also comes to nothing. The third argument is, in the court’s view, contradictory to the Defendants’ submission that the Defendants’ and the Applicants’ products are competing products. For the fourth point, the court misses concrete factual evidence as to which research projects etc. were in danger.
For the fifth argument, the court does not see any provision in the UPCA or in the Rules of Procedure that precludes the ordering of provisional measures in the case of highly complex technologies or a multitude of issues to be dealt with.

“Taking into account and appreciating all these circumstances”, the Court therefore orders the requested measures.

  1. Security (page 103)

The court considers that – should the Defendants be entitled to compensation as a result of the lifting of the provisional measures order – there is no evidence requiring the provision of security in light of the Applicants’ “economic condition” and US enforcement law. The requested measures are therefore ordered without security.

The fact that the Defendants, as the underlying party, have to bear the costs of the proceedings is self-evident in this respect and requires no further discussion.


With this judgement, the newly installed Unified Patent Court shows its strength. The streamlined conduct of proceedings established by the Rules of Procedure and, in particular, the technical expertise on the bench allow the court to decide even technically complex matters in a very efficient time frame.

Not surprisingly, the court therefore assumes that the order of provisional measures by the Unified Patent Court is also required in cases that present themselves as technically and legally very complex.

The judgement does not really address the question of urgency, since the application for the patent, which was not granted until May 2023, was filed at the earliest possible date, namely already on 1 June 2023. Waiting too long cannot be argued here.

With regard to the balancing of interests, it can be seen from the judgement that a plausibly presented reason why the applicant is threatened with irreparable harm should be sufficient for the necessity of ordering provisional measures, if the defendant cannot present good arguments against it.

The applicant’s previous or parallel activities to enforce his rights at national level are not taken into account by the court when weighing the interests, at least if, as here, it is a unitary patent.

However, it should not be overlooked that the order for provisional measures in the UPC is only available in a double pack, so to speak: According to Rule 213, the main action must be filed at the latest within 20 working days or 31 calendar days after a date fixed by the court, with Rule 9.4 prohibiting an extension of this time limit by the court. In the present case, the court did not set such a date, as the main action had already been filed by the Applicants.

Whereas in Germany, for example, the applicant can wait until the end of the limitation period to file a main action after the grant of an injunction for patent infringement, unless the defendant first either makes a closing statement or requests that the court set a time limit for the applicant to file the main action, in the UPC the injunction and main action proceedings are much more closely interlinked in terms of time.

In order to decide the present case, the Munich Local Division had to deal with many questions on the interpretation of the UPCA and its Rules of Procedure, which had previously been discussed theoretically at best, and has thus laid a foundation for further decisions to build on. The Defendants have already announced their intention to appeal. If this is indeed the case, the Court of Appeal under its President Dr. Grabinski will also soon have the opportunity to deal with these legal issues in a direction-setting manner.

Dr Michael Wallinger for EPLIT

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