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IP Insights: Are UPC injunctions subject to proportionality considerations?

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▶️ Watch our latest #IP Insights, in which our attorneys-at-law Dr. Anna Giedke and Dr. Tobias Wuttke share our first-hand experience at the UPC.

What has previously been a global discussion has now reached the Unified Patent Court.

Is there a disproportionality defense? These are the points to consider:

The UPC member states are in discussions whether you can defend yourself with a disproportionality defense against an injunction claim in patent law. Against such a defense you could argue with the rationale and purpose of patent law. The injunction claim is the sharpest sword patent law foresees to protect innovation, and this weapon should not be weakened.

On the other hand, we have the principle of proportionality which is recognized across jurisdictions. Individual cases may therefore require considering not only the interest of the parties involved, but also of third parties and the general public.

There’s no explicit requirement in Art. 63 UPCA that a special proportionality test must be applied before an injunction can be issued. This is in contrast to, e.g. Art. 64 UPCA on corrective measures like recall, removal or destruction.

But the Court has discretion as to whether an injunction is issued or not. Pursuant to Art. 63 UPCA, the court may order an injunction against an alleged infringer. This again is in contrast to, for example, Art. 68 UPCA, which deals with damage awards. Here the Court “shall” order the infringer to pay damages.

However, Art. 63 UCPA leaves open how this discretion shall be exercised.

Therefore, this must be based on general principles, like the principle of proportionality. We have many indications for that in the UPC Agreement which obliges the UPC, for example, to respect proportionality and fairness and to consider effects on competition, which also requires that when exercising its judicial powers, the UPC must consider the interests of the parties. And last but not least, that also when the Rules of Procedure are implied that they shall ensure a fair balance between the legitimate interests of all parties (Articles 41, 42 and 56 UPCA).

And against this background, it doesn’t surprise that in different contexts, we already see decisions of the UPC where the principle of proportionality is taken seriously, e.g. when issuing orders to preserve evidence.

Of course, EU-law plays a role. The UPC must respect the primacy of EU law pursuant to Art. 20 UPCA, and EU law recognizes the principle of proportionality as a fundamental rule. Article 5 (4) of the Agreement on the European Union recognizes this principle, and there are numerous decisions of the Court of Justice of the European Union dealing with proportionality. There’s even a separate protocol of that principle.

And last but not least, the EU Enforcement Directive recognizes the principle of proportionality. Pursuant to Article 3 (2) the measures foreseen must be proportionate. Also, when it comes to injunctive relief, Article 11 of the EU Enforcement Directive stipulates that the courts may order injunctive relief.

Taking into account the legal framework we discussed, and the discussions led on national level, e.g. in Italy, Germany but also in UK or USA, you can derive certain points to consider when applying a disproportionality defense:

  • The interest of patent holder is pursuing with his injunction. Does he want to secure a product market or is he pursuing merely monetary interests?
  • What would be the economic consequences of an injunction?
  • What would be the consequences for competition?
  • You might think of a component which is attacked and which is also part of a complex product, e.g. a small chip in a big high tech product. If it’s now difficult to remove the single chip or would require unreasonable efforts, an injunction would not only hit this chip, but the whole complex product.
  • What role does the infringing part play? Is it a major role? Is it merely a marginal function?
  • Value of the patent: Maybe you are aware of any patent purchase agreements to look at.
  • The point in time at which the patent was asserted: Did the patent holder wait quite long to cause more pressure because the alleged infringer?
  • Indications for abusive use of the patent rights committed so much more infringing actions in between.
  • Are there any other indications for abusive use of the patent rights?
  • Another point to consider are subjective elements. Do you have an intentional infringer, or do you have somebody who wants to respect third parties’ rights and who is willing to stop infringing actions?
  • Interests of third parties (consumers, patients, if important pharmaceuticals are at stake, and the public in general)?

❗️Takeaway: The UPC will recognize a disproportionality defense. But its relevance on the final rulings of the Unified Patent Court remains to be seen.

For more UPC-related IP videos, please take a look at our dedicated website.


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  • Attorney-at-Law (Rechtsanwältin), UPC Representative, Partner

  • Attorney-at-Law (Rechtsanwalt), Certified IP lawyer, UPC Representative, Partner

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