A guide to the UPC and the UP - Flipbook - Page 315
16-47 In deciding how to proceed, r.209(2) RoP specifies four matters that the Court must take into
account when exercising its discretion:
– Whether the patent has been upheld in opposition at the EPO;
– The urgency of the action;
– If applicable, the reasons put forward for not hearing the defendant; and
– Any protective letter filed by the defendant.
16-48 In respect of these four considerations, the first, like r.211(2) RoP, brings in consideration of
the patent’s validity. The RoP do not specify how the patent’s consideration during opposition
procedure should impact upon the Court’s considerations; however, considering the scheme
of the RoP as a whole it should be presumed that where a patent has been upheld after
opposition proceedings, the Court is more likely to take action favourable to a patentee
applicant. In the Netherlands and Germany, it helps if the patent has been previously tested
in an opposition proceeding or nullity action. Possibly, this would only extend to waiving any
requirement for a patentee applicant to lodge any evidence as to the patent’s validity. It should
be noted that the Court may stay proceedings where the patent is also the subject of
opposition proceedings at the EPO in which “a decision … may be expected to be given
rapidly”. 46 The interaction between this rule and the rules concerning provisional measures
is not set out anywhere in the RoP, but the rules on provisional and protective measures do
not expressly specify that an imminent decision from the EPO in an opposition is a factor to be
taken into account by the Court when exercising its discretion. Further, the RoP are silent about
whether the Court should take into consideration any revocation action before the central
division, although conversely the judge-rapporteur will accelerate the revocation proceedings
where an application for provisional measures has been lodged. 47 Ultimately, the Court will
consider all the facts that it considers material to the application 48 and how it should be
conducted and that may include the status of both EPO oppositions and revocation actions
before the central division.
16-49 The Court must also consider the urgency of the action when exercising its discretion as to
whether to inform the defendant of the application and whether to schedule either an oral
hearing with both parties or with just the applicant. If the claimant shows that the matter
is urgent, for example, if the goods are being demonstrated at a trade fair and will soon
thereafter be exported out of the jurisdiction of the Court, that will impact the scheduling of
the application. If the application is deemed extremely urgent, the standing judge may decide
the matter immediately. 49 In such a case, the matter can be decided on paper, with the standing
judge then setting the procedure to be followed on the application thereafter.
16-50 Protective letters are considered at paragraphs 16-73 to 16-89 and various aspects of
applications where the applicant requests that the defendant not be heard are considered
at paragraphs 16-58 to 16-72.
46
47
48
49
r.295(a) RoP.
r.40(a) RoP.
Note here that in Phoenix Contact GmbH & Co. KG v Harting Deutschland GmbH & Co KG and Harting Electric GmbH & Co KG (C44/21) ECLI:EU:C:2022:309, the CJEU stated that: art.9(1) Enforcement Directive precludes “national law under which
applications for interim relief for patent infringement must, in principle, be dismissed where the validity of the patent in
question has not been confirmed, at the very least, by a decision given at first instance in opposition or invalidity
proceedings.”
r.209(3) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 305
