The Unified Patent Court
The new Unified Patent Court (UPC) opened its doors on 1 June 2023, bringing with it sizeable changes and new opportunities for both patent owners and their challengers.
The new court is being introduced alongside the new European “Unitary Patent”, which will provide a single patent effective across up to 24 states.
The UPC has exclusive jurisdiction over revocation and infringement matters relating to European Unitary Patents, and also has jurisdiction over existing “classical” European Patents in a number of European Union countries (although for now, it remains in the patentee’s power to opt “classical” European Patents out of the jurisdiction of the UPC).
Read more about the UPC here.
One of the first actions taken in the UPC relates to a textiles dispute.
As our textiles clients and readers in the textiles industry will know, ITMA is a highlight of the year for many members of the industry. It is a chance to present, network and learn about cutting-edge developments.
In a surprising twist, it was at ITMA Milan 2023 that Oerlikon Textile GMBH discovered what they believe to be potential infringement of its European Patent No. 214848 by two other entities: Himson Engineering Private Ltd and Bhagnat Group. Possibly, Oerlikon delegates were walking the show floor and came across Himson and Bhagnat items that seemed rather familiar.
Therefore, on 12 June 2023, Oerlikon urgently applied to the UPC Milan Division for an order to preserve evidence of infringement seen at the exhibition.
The case for urgency was especially compelling for the reason that the fair was scheduled to end on 14 June 2023, following which key evidence would be dismantled and removed, leaving Oerlikon without the evidence on which proposed infringement proceedings could be based.
Likelihood of success on the merit of the case (“fumus boni iuris”)
For a “seizure” order to be made, it was important to establish that the court had jurisdiction and was competent to hear the case. The answer in this regard was that yes, the court did have jurisdiction – the relevant evidence being located in Milan – and competence (over infringement proceedings).
The court also considered the future substantive action (infringement proceedings) and examined the evidence provided by Oerlikon of its ownership of the patent (on which the court was satisfied) and the likelihood of infringement (satisfied). The court also looked at whether Oerlikon had provided a clear enough indication of the measures sought (they had – seizure of items at ITMA), including the exact location of the evidence (i.e. in the specific stands of the ITMA fair) and the reasons why the measures were necessary to preserve the evidence. The facts and evidence underlying the request by Oerlikon were deemed satisfactory.
Overall, the required likelihood of success on the merit of the case was found to be present.
Extreme urgency (“periculum in mora”)
The requirement of extreme urgency was found to exist, considering that ITMA was due to end on the very day on which the hearing of Oerlikon’s application (lodged on 12 June 2023) was decided – 14 June 2023.
The judge appointed an officer accompanied by a bailiff to acquire copies “of all technical, promotional and/or commercial documentation, in any format, relating to the textile machine identified… available in stand of the defendant at the ITMA 2023 Fair - Rho Fiera exhibition centre” (machine English translation of Italian text of the proceedings).
See full details here.
It is interesting to see a textiles case as one of the first matters in the UPC. We will be following the main proceedings (infringement; probably with a counter-claim for invalidity). The swiftness of this order is good news for patent proprietors looking to leverage the UPC against potential infringers; although the circumstances, especially the short time frame for action by the court in view of the length of the ITMA fair, were certainly extraordinary and there may be limited extrapolation to other cases in which the sense of urgency is less pointed.
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