The Court of Appeal has further developed the UPC's case law on urgency in preliminary injunction proceedings.
Although the order also addresses claim interpretation, added matter, international jurisdiction and cost allocation, its principal significance lies in its detailed guidance on the assessment of urgency under Rule 211.4 RoP. The Court clarifies when the urgency period begins, what investigations may reasonably be expected from a patent proprietor, and how actively patentees must pursue indications of infringement before seeking provisional measures.
Guardant sought provisional measures before the Paris Local Division based on four European patents relating to liquid biopsy technology. The application targeted Sophia Genetics' MSK-ACCESS® powered with SOPHiA DDM™ test.
The Paris Local Division rejected the application. As regards the patent remaining on appeal, it held that the patent was more likely than not invalid for added matter.
The Court of Appeal disagreed with that assessment. It concluded that claim 1 was directly and unambiguously disclosed in the application as filed and therefore rejected the added matter objection.
Nevertheless, the appeal ultimately failed because Guardant had not acted with the required urgency.
One of the most important aspects of the decision concerns situations in which several patents are allegedly infringed by the same product.
Guardant argued that it required additional time because it wished to prepare a single application covering all relevant patents.
The Court rejected that approach.
According to the Court, a patent proprietor is not obliged to assert all patents in one application for provisional measures. If sufficient information is available to seek provisional measures based on one patent, the proprietor should proceed without waiting until investigations concerning additional patents have been completed.
Delaying an application until all potentially infringed patents have been analysed may therefore itself constitute unreasonable delay. The Court further observed that neither the UPCA nor the Rules of Procedure require all infringed patents to be asserted in a single action. On the contrary, separate applications may even promote procedural efficiency, particularly given the need for a swift decision in provisional measures proceedings.
The Court also clarified the scope of the patentee's investigative obligations.
As a general rule, patent proprietors are not required to monitor the market proactively. However, once specific circumstances indicate possible infringement, they must investigate the matter with due diligence so that action can be taken against all infringers as quickly as possible.
Importantly, the Court held that a patent proprietor must not "turn a blind eye". If documents already analysed for one patent also indicate infringement of another patent, the proprietor is expected to recognise this. The urgency period cannot be postponed simply because those indications are ignored.
Applying this principle, the Court held that the documents relied upon by Guardant for its UK warning letter already contained the information necessary to assess infringement of the patent asserted before the UPC.
The decision also provides welcome clarification regarding a patent proprietor's general monitoring obligations.
The Court confirmed that patentees are generally under no obligation to monitor the market continuously for possible infringements.
Only once concrete circumstances suggest infringement does a duty arise to investigate the matter diligently. The mere fact that allegedly infringing products have been available on the market for some time is not, by itself, sufficient to establish that the patent proprietor should have become aware of the infringement earlier.
However, the Court added an important qualification. A long-standing infringement may indicate that the patent proprietor has turned a blind eye to the infringement. Whether this is the case depends on the circumstances of the individual case.
The order also clarifies whose knowledge is relevant where the patent proprietor is a legal entity.
The decisive point is not when any employee becomes aware of potentially infringing activities. Rather, the relevant date is when the information reaches a person who, by virtue of their position within the organisation, is capable of pursuing infringement proceedings or reporting the matter internally.
The Court expressly mentioned employees of the legal department, senior members of the sales department and dedicated mystery shoppers as examples.
By contrast, employees attending technical seminars without responsibility for patent enforcement do not necessarily trigger the urgency period.
The Court also confirmed two principles favourable to patent proprietors.
First, an applicant may generally wait a reasonable period for the alleged infringer to respond to a warning letter before commencing provisional measures proceedings.
Secondly, once sufficient information has been obtained, the applicant may take a reasonable amount of time to prepare the application itself.
Both periods, however, presuppose that the applicant has already obtained – or should, exercising due diligence, have obtained – the information necessary to file an application with a reasonable prospect of success.
