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.
ADDENDUM
In an order of the CoA UPC issued on 19.08.2024, the CoA UPC has decided that the appeal of the defendants, Sibio and Umedwings Netherlands B.V., against the PI issued by the UPC LD of The Hague, did not have a general suspensive effect. It only has suspensive effect as far as the PI mentioned Irland.
Insofar as the impugned PI extends to the territory of Ireland, the CoA agreed with Sibio that this is manifestly erroneous.
The CoA UPC held that only countries that have not only signed but also ratified the UPCA are Contracting Member States. Art. 84.2 UPCA provides that the Agreement shall be subject to ratification in accordance with the respective constitutional requirements of the Member States.
It follows that a Member State who signed can only be regarded as a Contracting Member State after ratification.
Therefore, Ireland is not a Contracting Member State and thus cannot be considered to be covered by Abbott’s request for a PI.
The Court of First Instance therefore awarded more than was requested for, which is contrary to Art 76 UPCA.
It is to be noted that the present decision of the CoA UPC is, once more, in flagrant contradiction with Art 9(1) UPA which provides that decisions of the CoA are taken by a panel of three LQM and two TQM.
Comments
2 replies on “Is the UPC competent to decide a PI to be applicable in signatory states which have not ratified the UPCA?”
It is indeed bizarre for a UPC court to rely on an expectation as to the outcome of a referendum as a legal basis, when actually nobody knows when a referendum could take place and whether a referendum will ever take place. It is hoped this will be overturned by the Appeal court.
Leaving aside the court’s competence for Ireland, this decision includes a very interesting reason – very interesting because it relates to its stance on the EPO case law, and could be of more general interest as to other issues than new matter. Here is the quote :
“Both parties relied on the case law of the (Technical and Enlarged) Boards of Appeal of the European Patent Office (EPO) to substantiate their arguments regarding added matter. They did not indicate whether – and if so in which way – the court should apply a different standard. This court will also apply that long-standing case law, and the court will therefore in particular apply the so-called “gold standard” disclosure test in this context, which is also the standard used in many Contracting Member States of the UPC.”
In other words, the court applies the “gold standard” of the EPO case law as to new matter because both parties have agreed to rely on this rule – not because it would be bound to defer to the EPO case law, or because the EPO case law is right. The court notes, however, that the “gold standard” is also applied by the courts of many member states, which mitigates the reliance on the parties’ agreement to apply the gold standard of the EPO case law. This means that the The Hague LD also acknowledges the influence of the case law of other European courts.
On this issue, I am sure this is just the start of a saga.
It is indeed interesting to note that the “court applies the “gold standard” of the EPO case law as to new matter because both parties have agreed to rely on this rule – not because it would be bound to defer to the EPO case law, or because the EPO case law is right”.
What will be interesting is what the CoA UPC will have to say about “the “gold standard” of the EPO case law as to new matter”. Only then, will we be able to see whether the “gold standard” of the EPO has been adopted by the UPC. Even the present LD was not affirmative on this topic. It accepted it merely because the parties agreed on it. What would have happened if one party had not agreed on it?
I am not necessarily convinced that eventually the UPC will adopt “the “gold standard” of the EPO case law as to new matter”. One reason is the insistence with which some promoters of the UPC, e.g. Sir Robin Jacob, want the EPO to follow the case law of the UPC when it comes to validity.
The complaints about the strictness of the views of the EPO are nothing new. For the instance, the German Federal Court (BGH) claims to follow the case law of the EPO when it comes to added mater. This is only true when a problem of added matter occurs during examination, but not when the validity of a patent is at stake. Then, the BGH will make everything possible to save the patent. The BGH proposed some solutions, which have all been turned down by the boards of appeal of the EPO.
The saga on this point is indeed only beginning.
Another contentious issue will be the problem-solution approach when it comes to assessing IS. There as well, I have some doubts that the UPC will follow the EPO. The UPC, like national courts, is not bound by the interpretation of the EPC given by the EBA in its G decisions or by the boards.
There is one thing in which the boards of appeal of the EPO and the UPC will share: their dislike for late submissions. Both want to get read of the cases as soon as possible, cf. the RPBA of the boards and the short time limits at the UPC and its RoP.