A guide to the UPC and the UP - Flipbook - Page 310
of damages. 22 Thus, for example, irrecoverable price erosion of a pharmaceutical protected by a
patent as a result of placing a generic alternative on the market, may be considered irreparable
harm to the right holder. In the absence of irreparable harm to the right holder, the Dutch or
German court is unlikely to grant a provisional injunction. In the Netherlands this is particularly
the case if the infringement has already commenced whereas in Germany this would be of only
minor importance.
Delay
16-26 Delay in seeking provisional or protective measures is a factor considered by courts in a
number of jurisdictions, but the importance of the consideration varies. For example, in
Germany and Belgium a delay in proceedings for a provisional injunction is likely to be taken to
indicate a lack of irreparable harm to the claimant. This consideration may be regarded as an
aspect of the court’s consideration of the damage that may be suffered by either party if the
court does or does not grant the provisional injunction. If an applicant delays in bringing its
application after they became aware of a defendant’s actual infringement, this may indicate that
the applicant is suffering little harm from the infringement, or that the only harm it expects can
be recovered later as damages. Similarly, if an applicant delays in bringing an application in
respect of threatened infringement until the infringement becomes actual, this may affect the
damage the defendant will suffer by the provisional injunction being made because it will be
forced to cease an activity already begun which may cause, for example, customer
dissatisfaction.
16-27 R.211(4) RoP refers to the Court having regard to any unreasonable delay. This appears
to acknowledge that not all delay by the applicant may be viewed negatively by the Court.
For example, it may be that the applicant is unable to obtain proper evidence for some time
after initially forming a suspicion of infringement or threatened infringement. Furthermore,
it may be that the circumstances are such that it is appropriate for the applicant to contact the
defendant before making an application.
16-28 The courts in the Netherlands have traditionally been very lenient on claimants delaying their
enforcement, with each and every individual infringing act or infringing product manufactured
or offered for sale or sold being deemed to provide a new urgent ground for action. Only for ex
parte injunctions is a higher degree of urgency required. In Germany, after years of requiring a
strict approach to acting promptly, the courts have recently become more lenient allowing a
slightly longer time before an application is filed.
Evidence to Support the Application
16-29 The applicant should supply the Court with “reasonable evidence” to support its application
showing that it is entitled to commence proceedings before the Court, that the patent in
question is valid and infringed or that such infringement is imminent, or such evidence may be
required by the Court before it takes a decision. 23 The requirement for “reasonable evidence”
may mean that the applicant need not put forward its entire case on, for example, infringement
at the provisional stage. The Court has to satisfy itself with a sufficient degree of certainty on
these matters. The degree of certainty that will be sufficient is not explained. It may be that
this is deliberately ambiguous in order to afford the Court a considerable degree of discretion.
In Germany, the level of the validity examination depends on whether the patent has survived
an opposition or not. The approach in other national laws is different: in Belgium and the
22
23
Irreparable harm is also the term used in art.9(4) Enforcement Directive.
r.211(2) RoP referring to art.47 UPCA which sets out the parties entitled to bring actions before the Court, namely,
the patentee and licensees. Exclusive licensees are entitled to bring actions before the Court provided that the patent
proprietor is given notice and the licensing agreement does not provide otherwise (art.47(2) UPCA). Non-exclusive licensees
are not entitled to bring actions before the Court unless expressly permitted to do so by the licensing agreement and even
then, they must still give prior notice to the patent proprietor (art.47(3) UPCA).
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 300
