Novartis AG and Genentech Inc. v. Celltrion Inc., Order of the UPC Court of First Instance, Düsseldorf Local Division, 6 September 2024, Case no. UPC_CFI_166/2024
The Düsseldorf Local Division recently rejected the application for provisional measures filed by Novartis as the Court found that Celltrion’s conduct did not yet constitute an imminent infringement.
Interestingly, the Court held that Art. 25 and 62(1) UPCA take precedence over national patent law and subsequently gave the following definition of ‘imminent infringement’:
“A situation of imminent infringement may be characterised by certain circumstances which suggest that the infringement has not yet occurred, but that the potential infringer has already set the stage for it to occur. The infringement is only a matter of starting the action. The preparations for it have been fully completed. These circumstances must be assessed on a case by case basis.”
The Court motivated as follows:
“Pursuant to Art. 62(1) and Art. 25(a) UPCA, the Defendants’ conduct does not yet constitute an imminent infringement.
“Contrary to the Defendant’s view, the Court is not required to apply different national laws to European bundle patents, such as the patent in suit, during the transitional period.
“In the absence of an opt-out (Art. 83 (3) UPCA) the patent will be under the jurisdiction of the UPC. With the creation of the UPC, Art. 64 (3) EPC, which stipulates that national law applies to patent infringement proceedings (cf. Benkard/Henke, EPC, 4th ed., Art. 64 para. 29), was amended on the basis of Art. 149a (1) (a) EPC. The amendment changes the jurisdiction (Art. 31, 32 UPCA), the procedural law (UPCA and RoP), the effect of the decision (Art. 34 UPCA) and the enforcement (Art. 82 UPCA) in favour of the UPC as European infringement court (cf. Tilmann/Plassmann/v. Falck/Dorn (german version), Unitary Patent, Unified Patent Court, Art. 34 EPGÜ para. 14). The UPCA also creates a uniform substantive law of infringement (see Art. 25, 26 UPCA), which interferes with Art. 64 (1) EPC in a permissible manner via Art. 142 (1) UPCA (see Tilmann/Plassmann/v. Falck/Dorn (german version), Unitary Patent, Unified Patent Court, Art. 34 EPGÜ para. 4, 21, 35).
“This substantive law in the UPCA will become part of the national law of the Contracting Member States after the UPCA has been ratified by the respective member state and incorporated or im plemented into its law. In this respect, Art. 25 et seq. of the UPCA take precedence over the patent infringement provisions in the single national patent laws of the UPCA Contracting Member States as special provisions with regard to patent infringement (cf. in the result also Luginbühl/Hütter- mann/Boos, Einheitspatentsystem, Art. 24 EPGÜ para 40).”
The Order can be read here in full.
