A guide to the UPC and the UP - Flipbook - Page 312
less significant. This is because, subject to the defendant agreeing not to continue or commence
the alleged infringement, or to provide guarantees, the applicant cannot procure any of those
objectives without assistance from the Court by way of provisional injunction. The injunction is
therefore logically necessary, presuming the absence of agreement by the defendant, because
the necessity relates to the prevention or cessation of infringement or obtaining guarantees,
rather than to any underlying reasons for, or desirability of, those things.
16-33 The requirement to include evidence to support the necessity of the application requires the
applicant to set out the facts and evidence relied upon including evidence to support the
necessity of the provisional injunction. If the above analysis is correct then such evidence could
be straightforward in nature, although care would need to be taken in circumstances where the
applicant had not previously raised infringement with the defendant in order to explain why the
injunction was indeed necessary. However, r.206(2)(d) RoP cross-refers to rr.211(2) and (3) RoP.
This suggests that the applicant’s evidence and indeed the concept of whether the provisional
measure is necessary, should be understood to include the substantive issue that the Court
must consider firstly under r.211(3) RoP, i.e. weighing up the interests of the parties and the
harm they each may suffer, and secondly under r.211(2) RoP, i.e. evidence that the applicant is
entitled to commence proceedings and that the patent is valid and infringed.
16-34 The requirement for a concise description of the action that will be started before the Court,
i.e. the main infringement action, comes from r.206(2)(e) RoP which states that this description
must include “an indication of the facts and evidence which will be relied on in support of the
main proceedings on the merits of the case”. Thus while there does not appear to be a
requirement for such facts and evidence to be submitted for the purpose of the application
for a provisional injunction, the applicant should consider in some detail how their case on
the merits will be made out in order that they can describe it at a high level in the application
for a provisional injunction.
16-35 The applicant may request that the provisional injunction be ordered without hearing the
defendant. 31 In that case, the applicant must state the reasons for not hearing the defendant.
R.206(3)(a) RoP states that these reasons must have regard in particular to r.197 RoP. 32
The reference is probably intended to refer to r.197(1) RoP which states that an order for a
saisie may be made without hearing the defendant in particular where any delay is likely to
cause irreparable harm to the applicant or where there is a demonstrable risk of evidence being
destroyed or otherwise ceasing to be available. The reference to destruction of evidence is
strange in a procedure where the remedies are not directed at the preservation of evidence.
Duty on the Applicant
16-36 R.206(3)(b) RoP also specifies that where the applicant seeks to proceed without the defendant
being notified, information about prior correspondence between the parties concerning the
alleged infringement must be provided with the application. This is an important consideration
since if the applicant has already notified the defendant of the alleged infringement, a fortiori
notification has been given of an intention to apply for a provisional injunction and this would
mitigate against the need to avoid notifying the defendant of the application. Thus the practice
in some jurisdictions of sending warning letters requires careful consideration under the Court’s
procedure. R.206(4) RoP also requires the applicant to disclose any material fact known to
it which might influence the Court’s decision to grant a provisional injunction without
hearing the defendant. 33
31
32
33
See also paragraphs 16-58 to 16-72 for further information on ex parte applications.
r.197 RoP is examined in more detail in chapter 18 (Orders to Produce Evidence, Including “Saisies”) paragraphs 18-68
to 18-80.
This is considered further at paragraphs 16-59 to 16-62.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 302
