IP Quick Tip: Injunctive relief in infringement proceedings before the UPC

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The question of how likely it is to obtain injunctive relief against patent infringers will be a driving factor for the attractiveness of the UPC system. So, let’s have a quick look at the setting that the UPC system provides for injunctive relief.

In substantive terms, the Agreement on a Unified Patent Court provides that a patent proprietor has the right to prevent any third party from making use of the invention.

Article 63, however, which governs the powers of the Court, states that the Court “may” grant an injunction when it finds infringement. This clear wording suggests that the patent proprietor does not have an unconditional right to an injunction in any case, but that the Court has a certain degree of discretion of whether or not to grant an injunction in a specific case. In contrast to what has been known from national patent laws, such as Germany’s, the UPC system obviously does not provide for “automatic” injunctions.

The interesting question will now be how the UPC will exercise its discretion. First of all, neither the UPC Agreement nor the Rules of Procedure stipulate which criteria are to be taken into account by the Court.

As a primary source of law, the UPC will, however, have to take the Enforcement Directive into account, which says that a proportionality test is to be applied before injunctions are granted. As long as there is not yet any established case law of the UPC on exercising the proportionality test with regard to injunctions, it is likely that the UPC judges will apply this test as it has been developed in national case law. In German patent law, for example, the denial of injunctive relief due to proportionality considerations is reserved for truly exceptional cases.

In summary, especially in the early days of the UPC system, as long as there is not yet any established case law, it is to be expected that the UPC will apply its discretionary power in a cautious manner and take a patentee friendly approach with regard to injunctions.