EP 2 713 879 B1 relates to a continuous glucose monitoring system.
Brief outline of the case
The proprietor Abbott Diabetes Care Inc. has requested a PI at The Hague LD of the UPC against Sibio Technology Limited and Umedwings Netherlands B.V as it considered the patent infringed by Sibio/Umedwings.
The Hague LD granted a PI for direct infringement of European patent EP2713879, prohibiting the defendants, individually and jointly, from infringing this patent, with immediate effect after service of the order.
The PI applies in Germany, France, The Netherlands and Ireland.
The interesting point is that The Hague LD considered itself competent for Ireland. Ireland has signed but not yet ratified the UPC.
The reasons for the order being applicable to Ireland
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, which is a signatory state to the UPCA, and therefore a Contracting Member State, even though Ireland has not yet ratified the Agreement.
In this case (unlike the parallel case 14945/2024), Sibio c.s. did not challenge the competence of this court with respect to Ireland. According to Art. 31 UPCA (which provides that the international competence of the court is established in accordance with Brussels Regulation 1215/2012 as amended by EU Regulation 542/2014, “BR”), and Art. 26, 35 and 71, 71a and 71b BR, this court therefore is competent to hear the case. Incidentally, Art. 24 BR does not apply as no invalidity defence has been raised.
Since the UK is no longer a Contracting Member State, the court does understand the application to also involve the UK. This local division is undisputedly competent to hear the case as the alleged (threatened) infringement occurred (inter alia) in the Netherlands (Art. 33 UPCA).
Comments
Whether Sibio/Umwedings have adopted the right strategy when faced with the request for PI by simply filing a cease and desist letter and not challenging the competence of the UPC for Ireland, or even the validity of the patent will not be discussed here.
What is, to say the least, strange, is that the LD The Hague found itself competent to decide for Ireland when presently, and probably for a while, Irland has not ratified the UPCA.
Is it sufficient to consider the mere signature of a treaty by a country for it to become automatically a contracting state? Reasonable doubts are permitted. I would have at least have expected a reference to the VCLT in order to support the interpretation of the court.
Other decisions of the UPC, especially from its CoA, do neither refer to the VCLT when
they interpret the UPCA in, let’s say promoting their interests. It is amazing
to see learned legally qualified persons to go as far.
If other panels than the LD The Hague, or this LD itself apply this reasoning, it would mean that the UPC is also competent to decide for Poland or the Czech Republic, should a European patent have been validated in those two countries. Those two countries have unambiguously declared that they would not ratify the UPC as it would be detrimental to their industry.
It is well known that UPC’s promoters have long fantasised about its long arm. But this is clearly going too far.
It is to be hoped that this decision will be appealed, and what the CoA (with a panel of 3 or 5 judges?) will have to say.
As far the withdrawal of the UK is concerned, reasonable doubts are permitted as the UPCA does not contain any exit clause. Furthermore the exit is the result of a mere “note verbale” and has not been done according to the VCLT. I refer to an older post of mine about the Damocles’ sword hanging over the UPC after Brexit.
Following the reasoning of the LD The Hague, and in the absence of an exit clause in the UPCA, it could well be considered that the UPC is still competent for the UK which has signed and ratified the UPCA.
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