In addition to the fascinating debate on Brexit and the UPC (reported here), AIPPI’s standing committee on the unitary patent and UPC hosted a mock preliminary injunction application in Milan this week. The subject matter was two patents relating to fusion protein treatments. Organisers assembled a stellar cast for the mock: the first instance panel comprised Mr Justice Henry Carr from the UK (elected as presiding judge), Judge Rian Kalden from the Netherlands Court of Appeal and Judge Matthias Zigann from Germany; and sitting in the UPC Court of Appeal was Judge Marina Tavassi, recently promoted to the position of President of the Court of Appeal in Milan. Representatives for the parties (two per party) included Annsley Merelle Ward from Bristows and leading patent lawyers from each of Denmark, Germany and the Netherlands.

Some notable points

Although the first instance court was “only just” satisfied, the claimant was awarded its injunction, and notable points arising included:

• prior filings of national revocation actions by the defendant may not be effective to “torpedo” the UPC’s jurisdiction, at least in preliminary injunction cases. (After the mock proceedings, Judge Tavassi said that although there would have been difficulties in framing a question to refer to the CJEU on the question of the effectiveness of the “torpedo”, she probably would have had to refer such a question.)
• the interpretation of the requirement for a preliminary injunction application that the claimant should provide evidence establishing infringement and validity with a “sufficient degree of certainty” (Article 62(4) UPC Agreement) may imply that the court should be “comfortable” with the level of evidence
• prior revocation of the patent in one state may not, of itself, be enough to make the court doubt validity when the patent has survived opposition in the EPO and in other national courts
• in a biosimilars case –
  • the fact of regulatory approval may of itself potentially shift the burden of proof on to the defendant to show non-infringement, even in cases where only the molecule is claimed and the claim is not expressed in functional language
  • the UPC may accept traditional arguments run in small molecule cases of spiralling price depression and regard these as sufficient reason to accept the potential for substantial harm to the originator
• decisions of the UPC must cover all jurisdictions, and hence a threat of infringement in one country which merits injunctive relief would result in an injunction in all countries where the patent was subsisting (Article 34 UPC Agreement).
• the UPC may not have jurisdiction to require a claimant to give a cross-undertaking except for the benefit of the defendant: national health authorities and others may have no possibility of being compensated.

Admission of new evidence

Following the decision, the defendant appealed and the mock session concluded with an urgent application to the Court of Appeal on the limited question of whether new evidence could be admitted, and if so, result in a potential immediate suspension of the injunction. This evidence was a statement by the claimant’s expert, made before the priority date of the relevant patent, suggesting that the development described in the patent was a natural way forward and hence that the patent was obvious.  It was argued that this was plainly contradictory to the expert’s declaration submitted in the proceedings that the patent was inventive, and indeed that the expert had lied in his report.

Judge Tavassi interpreted the relevant UPC provisions on admission of new evidence in a strict way, because, although not known to the defendant but apparently known to the claimant, the statement pre-dated the defendant’s response brief in the case.  She also considered that the statement was relevant to only one of the two patents in suit, despite the fact that the two patents had different territorial scope.

Differences from national proceedings

More generally, in the subsequent debate the judges commented on how their national proceedings might have differed.  The consensus was that the same overall result was probable, although the reasoning might have been different.  Of most significant difference would have been the question of admission of new evidence into the Court of Appeal – in the Netherlands there are no restrictions. A debate on the appropriate test for infringement – purposive or by equivalents – was inconclusive.

Although truncated by the need to debate the implications of Brexit, the mock proceedings suggest that if the UPC does proceed, judges of differing national traditions will be able to work together. There is one caveat to this:  even if this is without the UK, the common language used by the judges will generally have to be English.  At a practical level, English is the only language in which most judges will be able to communicate effectively during their deliberations. (And of course for a decade the judges’ annual conference in Venice has operated solely in English.)  This is all the more reason why a UK-less UPC is undesirable: far better to have a variation of the system which allows UK participation post-Brexit.