LD Milan, November 22, 2024, Application for provisional measures, UPC_CFI_400/2024

In proceedings for provisional measures, the Applicant is required to provide cumulatively reasonable evidence to satisfy the Court with a sufficient degree of certainty that: (i) the Applicant is entitled to initiate proceedings under Art. 47 UPCA; (ii) the patent is valid; (iii) its rights are being infringed or that such infringement is imminent (R. 211.2 RoP). Additionally, the balance of interests must be in favour of the Applicant (R. 211.3. RoP). Therefore, the absence of any one of these requirements is sufficient to warrant dismissal of the application.

In the present case, the Court found an insufficient degree of certainty that the patent is valid because it lacks novelty, wherein the Court applied a claim interpretation based on Art. 69 EPC and the Protocol on its interpretation as well as UPC case law, in particular Düsseldorf Local Division, UPC_CFI_463/2023; Court of Appeal, UPC_CoA_335/2023; Düsseldorf Local Division UPC_CFI_452/2023.

Auxiliary requests to amend the patent pursuant to R. 30.2 RoP are inadmissible in proceedings for provisional measures. This is consistent with the required expediency of the procedure, which demands both the imminence of prejudice and the necessity to uphold the adversarial principle and the right of defence.

This is following the UPC case law on patent amendments from the Lisbon Local Division, UPC_CFI_317/2024, and the Paris Central Division, UPC_CFI_255/2023.

In addition, the amendment of the patent is expressly admitted only in the defence to the counterclaim for revocation (R. 30.2 RoP) or in the defence to revocation (R. 50.2 RoP). Further, provisional measures are instrumental to the main proceedings and do not produce res iudicata effects that may derive only from final decisions on the merits after the exhaustion of appeal rights or after the expiry of time limits for appeal – even regarding patent amendments.

The phrase “amend its case” in R. 263.2 RoP for the application of the Applicant to limit the claim to the auxiliary requests previously submitted refers to any modification of the case by the introduction of a new claim or the substitution of the original claim (“change its claim”). This is therefore a different instrument from the application to amend the patent, which is governed by R. 30.2 RoP. In proceedings for provisional measures, the former is inadmissible if it constitutes an attempt to introduce a request to amend the patent.