Wednesday, 15 May 2013

Litigation in the Brave New World 5: Preliminary Procedures and Provisional Measures

EU patent litigation: will
this complex machine work?
In this, the fifth in the series of blogposts on the European patent package reform, Don McCombie (Latham & Watkins) examines some of the mechanics of the new regime for European patent litigation. He explains the proposed new rules governing preliminary procedures and interim relief, orders governing the inspection of premises and the preservation of evidence, and freezing orders that prevent the removal of a litigant's assets from the jurisdiction.
Preliminary Procedures and Provisional Measures 
Having now covered the more difficult, technical aspects of the proposed new Unified Patent Court (UPC) in a number of lengthy posts, the next few posts will deal with a few discrete aspects of the proposals.  This post deals with preliminary procedures and provisional measures. 
Interim/Preliminary Injunctions 
Article 62(1) of the UPC Agreement provides for the grant of injunctions against an alleged infringer “or against an intermediary whose services are used by the alleged infringer” on a provisional basis. The wording   largely tracks that of Article 9(1)(a) of the Enforcement Directive, although there are some differences.  Article 62(1) states that such injunction may be subject to a ‘recurring penalty payment’, which under the Enforcement Directive is only available if provided for under national law.  Part 4 of the 14th Draft of the Rules of Procedure deals with the procedure relating to provisional measures, but there is no provision relating to ‘recurring penalty payments’, or how these are to be implemented in practice. Article 62(1) also states that the court may order that the continuation of the alleged infringing activities be made subject to the “lodging of guarantees intended to ensure the compensation of the right holder”, and an applicant for provisional measures must state reasons why such measures are considered necessary (R206(2)(c)). 
Article 62(2) states that “the Court shall have the discretion to weigh up the interests of the parties and in particular to take into account the potential harm for either of the parties resulting from the granting or the refusal of the injunction”. This is repeated in R211(3), but the UPC Agreement and the Rules of Procedure are silent as to how the court is to weigh up the relative interests of the parties.  However, R211(2) does state that the Court “must be satisfied with a sufficient degree of certainty that the applicant is entitled to commence proceedings […], that the patent in question is valid and that his right is being infringed, or that such infringement is imminent”.  Individual national laws take different approaches to these issues – please see the previous post in this series for a discussion of the applicable law.  I won’t return to the issue of conflicting national law approaches in any detail here, but I note, for example, that the English courts have developed substantial case law following the American Cyanamid principles, which differs from the approach taken by the German courts. 
If an injunction is granted, the Court may order the patentee to provide security adequate to compensate the defendant in the event that the Court revokes the order for provisional measures (R211(4)), and payment of security is compulsory in ex parte actions. 
Part 3 of the Rules of Procedure provides detailed guidance on a number of points, including: the lodging of protective letters (“schutzschrifte”) (R207); the formal requirements of an application for provisional measures (R206); formal examination of the application (R208); the Court’s discretion whether to inform the defendant of any application (R209); any oral hearing (R210); ex parte decisions (R212); and the revocation of provisional measures and the requirement for compensation of the defendant (R213). 
Orders to Preserve Evidence and Inspect Premises 
Article 60 of the UPC Agreement sets out relatively comprehensive provisions for the preservation of evidence (also known as a Saisie) and the inspection of premises. Save for the inspection provisions, Article 60 is broadly similar to Article 7 of the Enforcement Directive. Part 2, Chapter 4 of the Rules of Procedure sets out how to apply for these measures.  Article 60(1) allows a claimant, even before the commencement of proceedings, to apply for measures to preserve relevant evidence, which may involve taking samples or seizing infringing goods, items used in the protection of allegedly infringing products or documents (Art 60(2)).  These measures may be ordered ex parte (Art 60(5) and 60(6)), may require the lodging of security by the applicant (60(7), and may be  revoked (60(8)). 
Whilst orders to preserve evidence are already covered in the Enforcement Directive, with Member States therefore already being obliged to provide equivalent measures under national law, the inspection provisions in Articles 60(3) and 60(4) may have no national equivalents in some Member States.  The order for inspection envisaged in Article 60 appears similar to a so-called 'Anton Piller' order under English law, requiring the conduct of the search of any premises to be supervised by an appointed person.  As the geographical location of the premises to be searched will clearly fall within territorial scope of only one national part of a European patent, the national law to apply to the search order, insofar as this is not covered by EU law or the UPC Agreement, should be easy to determine (see the previous post). 
Order to Freeze Assets 
Article 61 of the UPC Agreement provides for freezing orders, which are governed by largely the same procedure at that for Saisie applications (see R200).  The wording of Article 61 differs substantially from that of Article 9(2) of the Enforcement Directive, but procedures implemented in national laws under the Directive are likely to broadly provide for the measures described in Article 61.  The Court may “order a party not to remove from its jurisdiction any assets located therein, or not to deal in any assets, whether located within its jurisdiction or not”.  This is potentially a very broad power, which may be applied for before the commencement of proceedings where infringement has already taken place or is anticipated to occur. 
Next post 
The next instalment in this series will cover general case management issues and evidence procedures.

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