Order from the Court of Appeal of the UPC: Suspension of the First instance injunction as Ireland is not a contracting member state

On 19 August 2024, the Court of Appeal of the UPC (CA, Sibio Tech & Umedwings v. Abbott, 19 August 2024, UPC_CoA_388/2024) considered that the injunction ordered by the Local Division of the Hague was manifestly erroneous and suspended it in so far as it covered Ireland. The preliminary injunction had been granted for member states in which the European patent was in force, including Ireland, which the Court of Appeal explained is not a contracting member state.

Key takeaways:

• Contracting member states are countries that have not only signed but also ratified the UPC Agreement.
• An appeal will not have suspensive effect before the UPC unless an exception applies, for example if the order against which the appeal is directed is manifestly erroneous, or if the enforcement of the appealed order or decision would make the appeal devoid of purpose.
• An order which awards more than requested by the claimant is manifestly erroneous according to the provisions of Art 76 of UPC Agreement.

However, although the point appears not to have been tested in the Sibio v Abbott case, the UPC might yet be able to grant cross-border preliminary injunctions with effect in non-UPC EU countries pursuant to the Brussels Regulation (1215/2012), even if those countries have not ratified the UPC Agreement. According to a lecture given by UPC Judge Rian Kalden in 2023, when jurisdiction is based on the domicile of at least one defendant within UPC territory, the “jurisdiction of the court may extend beyond its own territory, i.e., may include infringements of a patent in force outside UPC territory“.

It will be interesting to understand why the Brussels regime was not discussed before the Court of Appeal, and how the UPC Court of Appeal, or the CJEU, will rule when a case presents the opportunity.