UPC_CoA_388/2024 APL_39884/2024
The UPC Court of Appeal recently ruled that a preliminary injunction cannot extend to cover activities in Ireland on the basis that it is not a Contracting Member State.
BACKGROUND
In March this year, Abbott Diabetes Care Inc (“Abbott”) applied for a preliminary injunction in respect of its European Patent no. EP 2 713 879 (concerning continuous glucose monitoring devices) (the “Patent”) against SiBio Technology Limited (“Sibio”), a manufacturer of a competing device, and Umedwings Netherlands B.V., an importer of SiBio’s devices. Abbott’s application sought relief “for the Contracting Member States in which the patent is in force”.
Back in June, the Hague Local Division granted Abbott’s application. In doing so, it reasoned that:
‘Abbott’s application in section 7.2 sets out the following: “The Patent is valid and in force in the Contracting Member States of Germany, France, The Netherlands and also Ireland. It is also in force in the UK.”. Read together with the order sought, this entails that Abbott apparently wishes the order to also cover Ireland.’
It determined that, as Ireland is a signatory state to the UPC Agreement (“UPCA”), it is a UPC Contracting Member State. Therefore, the injunction should extend to Ireland, as one of the jurisdictions covered by the Patent.
SiBio lodged an appeal, arguing that it was “manifestly erroneous” for the Order to cover Ireland, a country which has not yet ratified the UPCA. It sought for the Order to be set aside and for the appeal to have suspensive effect (or at least to the extent that the Order covered Ireland).
COURT OF APPEAL
The Court of Appeal in Luxembourg agreed with SiBio. Although Abbott’s application may have implied that Ireland was a UPC Contracting Member State, the Court of Appeal made clear that ratification is a required step to obtain this status, as set out in Article 84(2) of the UPCA.
It ruled, therefore, that the Hague Local Division had incorrectly interpreted Abbott’s application, exceeding the scope of Abbott’s request for a preliminary injunction, contrary to Article 76 of the UPCA. It proceeded to grant suspensive effect in relation to the Order, insofar as it extended to Ireland, pursuant to Article 74(1) of the UPCA.
COMMENTARY
The Court of Appeal has provided some clarity as to the scope of the UPC’s jurisdiction in respect of countries that have not yet ratified the UPCA. Prior to this appeal decision, Irish businesses may well have been concerned about becoming subject to orders of the UPC whilst being unable to otherwise participate in the unitary patent system. The Court of First Instance’s decision also risked undermining the ratification and referendum process in individual member states.
However, this decision was somewhat confined to its facts, focussing on the wording of Abbott’s request and the application of Articles 74 and 76 of the UPCA. The Court of Appeal did not go so far as stating that Abbott would be prevented from obtaining a preliminary injunction in Ireland, had the Court interpreted Abbott’s request for injunctive relief to extend to the country.
Whilst this might appear to be a logical consequence following the reasoning adopted by the Court of Appeal, this issue is complicated further by Article 71b(2) of the Brussels Recast Regulation (which was implemented in direct response to the introduction of the UPC). This provision states: “Application may be made to a common court for provisional, including protective, measures even if the courts of a third State have jurisdiction as to the substance of the matter”. The UPC is deemed to be a ‘common court’ for these purposes. This widely-debated provision has not yet been interpreted in UPC case law and, as such, we await further clarity as to the scope of the UPC’s powers to order provisional measures outside the Contracting Member States.
This case also brings into sharp focus Ireland’s future participation in the UPC. Ireland signed the UPCA over 10 years ago, but has recently deferred the referendum on the transfer of powers to the UPC. Proponents of the UPC in Ireland seek for the referendum to be rescheduled as soon as possible, expressing concern that further delay will impact on Ireland’s influence on the development of UPC jurisprudence, as the only common law country to participate in the UPC.
