Key takeaways
No lack of urgency although application filed more than nine months after becoming aware of sales of attacked embodiment
Applicant became aware of sales of the attacked embodiment (mushrooms) in UPC territory in late July 2023 and filed an application for provisional measures on May 14, 2024. In the meantime, applicant, amongst others, had three expert opinions prepared, all dated May 1, 2024.
The court found that the applicant acted diligently in the circumstances of the instant case. It appreciated that it takes time to collect both genetical and morphological evidence. It pointed out that the burden of presentation and proof for facts lies with the applicant. The applicant therefore only should apply to the court if it has reliable knowledge of all the facts that make legal action in the proceedings for provisional measures promising and if it can substantiate these facts. The applicant may prepare for any possible procedural situation that may reasonably arise.
Fungi not excluded from patentability under Art. 53(b) EPC
The court found that Art. 53(b) EPC as an exception to patentability must be interpreted restrictively and the exception should be construed narrowly. The exclusion concerns plant and animal varieties only and therefore does not encompass organisms other than plants and animals, such as mushrooms which belong to the fungi kingdom.
For the assessment of patent infringement, genetical identity can be assumed if analyses show a similarity of 99,88 % or above
To establish patent infringement in the instant case genetical identity between the attacked embodiment (mushrooms) and a reference strain was required. The court found that in view of inevitable sequencing errors 100% identity will likely not be found even between samples from the same strain with the present techniques. Against this background, genetical identity can be assumed to exist in case the sequencing results show a similarity of 99,88 % or above.
Interim award of costs in the amount of the court fees
The court found that proceedings on the merits will have to follow shortly, and the costs can thus be recovered in the cost proceedings following this action. The interim amount to be awarded was therefore limited to the court fees incurred. The other costs, notably those involved with the expert and costs of representation, are also relevant for the proceedings on the merits and are to be recovered there.
Enforceability subject to deposit of security
The request of the defendant to make the granting of provisional measures dependent on the provision of a security of EUR 200,000.00 for the enforcement by the applicant was granted. The applicant had not object to this.
Division
LD The Hague
UPC number
UPC_CFI_195/2024
ACT_23163/2024
Type of proceedings
First instance proceedings, Proceedings on provisional measures
Parties
Amycel LLC
Defendant redacted
Patent(s)
EP 1 993 350
Jurisdictions
Place jurisdictions
Body of legislation / Rules
Rule 206 RoP, Rule 211 RoP, Art. 62 UPCA, Art. 53(b) EPC
