Case Law Update: Act now for successful provisional measures at the UPC!

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🧁 Short & sweet: 

To succeed on the urgency issue in an application for provisional measures, start proceedings as early as possible and, if there are any mitigating circumstances for any perceived delay, set these out from the start.  

If you plan to file a preliminary objection, the deadline is set during provisional measures proceedings.

🤷 Issues considered:

The LD Brussels has issued its first decision on provisional measures in the case of BARCO v. Yealink.

Deadline for filing a preliminary objection

👉BARCO argued that Yealink's preliminary objection (relating to lack of territorial competence) was lodged too late, relying on the one-month deadline from service of the statement of claim, as set out in Rule 19 RoP.

🚫 However the Court did not agree, saying that the one-month rule does not apply to provisional measures proceedings, where “the written procedure follows its own momentum”. In this case, the time limit for preliminary objections had been agreed between the parties and had been met by Yealink. 

Urgency 

👉BARCO then argued that the urgency requirement was met, given that proceedings were initiated on October 2, 2024, i.e. just 1 month and 10 days after BARCO's request for unitary effect was granted (August 23, 2024).

🚫 However, the Court was of a different opinion, as the European patent was granted on June 12, 2024. According to the Court, BARCO could have initiated proceedings earlier based on the granted European patent, subsequently amending its claims in light of the unitary effect. Indeed, according to the Court, “If unitary effect is registered during UPC proceedings, and if such unitary effect would lead to an amendment of the originally sought relief, the applicant has sufficient means to amend its claims”.

🚫 Barco had admitted to knowing about the disputed products “for a long time”. In light of the above, considering the new timeframe for starting proceedings (from at least June 12, 2024), the Court rejected BARCO's request for provisional measures due to lack of urgency. The Court also mentioned that if an infringement action had been started promptly, then BARCO would have been expecting a decision on the merits in summer 2025. 

🫵 What does this mean for you?

If you delay filing your application for provisional measures as soon as you know and as soon as you can, this is likely to count against you.  This means act as soon as you know about possible infringement and don't delay once you know the patent is granted. 

File your application as soon as you can. And make sure you can justify any delay.  

With thanks to Andrea Vantini for this case law update. 

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