SONN Patentanwälte – IP Attorneys

UPC Board of Appeal: Territorial Scope of Preliminary Injunction

The Local Division The Hague partially granted an injunction. The applicant (in first instance) had argued that the patent was valid and in force in the Member States of the Agreement on a Unified Patent Court (Germany, France, the Netherlands, and also Ireland). The Local Division The Hague interpreted this to mean that the request should also cover Ireland, which is a signatory to the Agreement on a Unified Patent Court and thus could be considered a Member State, even though Ireland has not yet ratified the Agreement. Consequently, the injunction issued by the Local Division The Hague also included Ireland. According to the Court of Appeal, this reasoning is clearly flawed. Only countries that have not only signed but also ratified the Agreement on a Unified Patent Court are Contracting Member States. The term “Contracting Member State” is defined in the Agreement on a Unified Patent Court as a Member State of the European Union that is a party to the Agreement. Article 84(2) of the Agreement on a Unified Patent Court provides that the Agreement must be ratified according to the respective constitutional requirements of the Member States. It follows that a signatory Member State can only be considered a Contracting Member State after ratification. Ireland is therefore not a Contracting Member State and cannot be included as part of the request for an injunction (Unified Patent Court, 19 August 2024, Court of Appeal 388/2024).