Preparation is paramount – Unified Patent Court issues ex parte preliminary injunction within hours

Local Division in Düsseldorf grants ex parte injunction and seizure order on the date of the application, and subsequently imposes penalties

Why should I read this?

150 days after the coming into effect of the Agreement on the Unified Patent Court (“UPC”), more and more decisions are being published. The case myStromer AG ./. Revolt Zycling AG regarding Pedelecs exhibited at a trade show put the UPC onto the map. It illustrates that a proper defence strategy must anticipate national patent infringement proceedings as well as UPC proceedings. Not only did the Local Division in Düsseldorf grant the requested preliminary injunction and seizure order on the day of the application, it also denied the defendant an oral hearing. The defendant had seen the attack coming and filed a so-called ‘protective letter’ with the UPC. However, to no avail. The non-infringement arguments did not convince the Local Division, and possibly owing to time-constraints the defendant did not say anything about validity. The patentee feared loss of market share because of the infringing activities at the trade show. Accordingly, the Local Division issued an ex parte order (UPC reference no. UPC_CFI_177/2023). For the defendant, the sorrow did not end here. Following service of the order the defendant failed to react immediately. It only dismantled the exhibition stand a few hours later, and continued to offer test rides with the Pedelec on Instagram until the following day. As a consequence, the defendant was ordered to make a penalty payment (UPC reference no. UPC_CFI_177/2023).

What should I do?

Patentees will be delighted that the UPC (Local Division, Düsseldorf) goes out of its way to support the enforcement of patents in Europe. From the defendant’s perspective, these are the key takeaways from myStromer AG ./. Revolt Zycling AG:

• a company intending to exhibit products at a trade show in any of the 17 EU member states belonging to the UPC contracting states (such as Germany, the Netherlands, Italy), needs to factor in the risk of potential UPC proceedings. Since 1 June 2023, patentees have a choice of forum, they can take the national or the UPC route. The availability of UPC injunctions may well call for an adjustment of the risk assessment
• filing a protective letter can help to avoid an ex parte injunction. However, a defendant likely will only have its day in court if the protective letter presents convincing non-infringement arguments and manages to call validity of the patent into question. Preparation is paramount, but may be challenging due to time constraints
• the trouble doesn't end with the grant and service of the order. If the defendant fails to comply with the order, it runs the risk of penalty payments. Again, preparation is paramount. Companies attending a trade show are well advised to educate staff at the booth on how to react when an order is served. Precautionary measures may include organisation and availability of a team for immediate dismantling of exhibition stands. Furthermore, while social media are powerful tools for advertising products, the adverts may trigger penalty payments. Companies should therefore identify a member of staff responsible for the immediate removal of online/social media marketing, if necessary

What else do I need to know about the UPC?

We are in the middle of ‘the autumn of the preliminary injunction’, with many applications and protective letters being filed. Many of the resulting decisions will be appealed and will therefore end up before the Court of Appeal. This second instance will probably have ample opportunity to harmonise UPC case-law and to provide guidance on, for example, how strong the invalidity case presented in a protective letter must be. Is it enough to call validity into question, or does the defendant have to show that, once attacked, the patent will be revoked? For the time being, companies should consult with their trusted advisors who monitor the development of case-law and can help them asses risks.

Further reading on UPC emerging trends: 

• Emerging trends from the first 150 days of the Unified Patent Court
• Unified Patent Court: Competencies Revisited
• Unified Patent Court: another hurdle overcome - Milan, here we go