The UPC Court of Appeal has suspended a preliminary injunction against SiBio, allowing it to distribute its CGM device in Ireland. The ruling clarifies that Ireland, despite being a signatory to the UPCA, is not a Contracting Member State due to the fact that it has yet to ratify the agreement. Our Intellectual Property team examines how this decision has important implications for Irish stakeholders in the life sciences sector regarding UPC jurisdiction until ratification occurs.
The UPC Court of Appeal, overturning the first instance ruling of the UPC Local Division in The Hague, has suspended a preliminary injunction (PI) that was granted in favour of Abbott. The injunction had prevented SiBio from distributing its continuous glucose-monitoring (CGM) device in Contracting Members States; the suspension applies specifically to Ireland.
The presiding judges reasoned that although Ireland is a signatory to the Agreement on a Unified Patent Court (“UPCA”), the fact that Ireland has not ratified the UPCA means it cannot be considered a Contracting Member State, placing it outside the jurisdiction of the Court.
The decision offers clarity on the extent of Ireland’s involvement in the UPC and its jurisdiction until such time that the anticipated referendum is held to ratify the UPCA.
Background
Abbott filed a request for a PI on 20 March 2024 seeking to enforce its rights under its own CGM patent. The injunction was issued against SiBio in the Contracting Member States of Germany, France, The Netherlands and also Ireland. It was granted on 19 June 2024 for all the Contracting Member States named despite the fact that Ireland had not yet fully ratified the UPCA. The Court of First Instance acknowledged this fact stating 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.”
Seemingly, the fact that the UK had withdrawn its own ratification of the UPC meant that the application was not considered for this territory.
Although SiBio did not initially challenge the jurisdiction of the Court of First Instance regarding its decision on Ireland, it later appealed the PI specifically concerning its applicability to Ireland. SiBio argued that extending the scope of the order to include Ireland was “manifestly erroneous”. The deciding judges of the Court of Appeal agreed:
“Only countries that have not only signed but also ratified the UPCA are Contracting Member States”.
The appeal decision therefore effectively suspended the PI insofar as it extends to Ireland, offering greater clarity on the jurisdictional limits of UPC rulings.
Ratification plans
Ireland was due to hold a referendum on its ratification of the UPCA on 7 June 2024. However, the referendum was postponed to a later date and this date has yet to be determined. Since ratification would effectively transfer the jurisdiction of patent litigation from Irish courts to an international court, a referendum is necessary to amend the Irish constitution to allow for this change. If the first instance decision had stood unopposed, it may well have created political turmoil for being unconstitutional.
Reception in Ireland and further afield
The ruling will therefore be welcomed in Ireland as well as other countries in a similar position, such as Greece and Hungary, who have also signed but not yet ratified the UPCA. It will provide clarity for businesses with protection in these countries that any decision of the UPC will not extend to these territories and other means of enforcement will need to be considered.
Comment
The Court of Appeal has avoided a potential political slip-up by overturning the first instance decision and ruling that signatories to the UPCA who have yet to ratify the Agreement are not to be considered Contracting Member States. Until such time as these countries ratify the UPCA, any decision of the UPC will not apply to them. For Ireland, this means that it can rearrange its date for a referendum on ratification of the UPCA without fear that UPC decisions will overstep and seemingly ignore this fact, seeking to enforce remedies without jurisdictional authority.
For more information and expert advice on protecting your organisation's IP rights, contact a member of our Intellectual Property team.
People also ask
What is the Unified Patent Court? |
The Unified Patent Court, or UPC, is a Court, comprising judges from all participating Member States of the European Union. It is set up to decide in particular on the infringement and validity of both European Patents with unitary effect (Unitary Patents) and classic European Patents. It has been in operation since 1 June 2023. |
What is a Unitary Patent? |
The Unitary Patent is a single patent covering all EU Member States that are participating in the system. The Unitary Patent eliminates the need to validate a granted European patent separately in each country of interest, simplifying the process by removing many of the translation requirements traditionally associated with patent validation across multiple national states. |
Who are Contracting Member States to the UPCA? |
The UPC is a court common to, currently, 18 EU Member States such as Germany and France who have signed and ratified the Agreement on a Unified Patent Court (UPCA). The UPCA can be ratified by a further 6 EU Member States which have signed the UPCA. |
What is a preliminary injunction? |
A provisional equitable remedy by which a court orders a litigant to perform, or refrain from performing, a particular act before the entry of final judgement. The purpose of a preliminary injunction is to preserve the status quo and the rights of the parties until the issuance of a final judgment in the case. |
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