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For all decisions of the UPC’s Court of Appeal from the start in 2023 until 1 January 2025, Willem Hoyng’s more comprehensive summaries and comments are bundled in the book “Case law – Court of Appeal of the UPC 2023-2024”.
3 March 2025 (only reported last week)
Local Division Mannheim, X v Y
Saisie
Facts
X requests a saisie under Art. 60 UPCA and R. 192 RoP, arguing that infringement is highly probable. The opt-out of the patent has been withdrawn.
The JR
The order is rejected because the applicant failed to set out that there is a sufficient probability of infringement of the asserted claim. If a certain technical result can be achieved in multiple ways, the applicant has to submit facts that make it plausible that the technical result is reached by implementing the patented invention.
Comment
- This is an interesting decision, as the requirements for obtaining a saisie (ex parte) vary significantly between UPC countries. In France, no infringement case is generally started without a saisie, which is relatively easy to obtain (although in recent years, there has been a tendency to apply stricter requirements regarding proof of infringement). At the other end of the spectrum, Germany (which does not have a saisie tradition) has not seen much change after implementing Art. 7 of the Enforcement Directive, and saisies are rarely granted.
- In my opinion, an ex parte saisie is a very invasive measure, and a certain level of restraint is necessary to avoid fishing expeditions. I also believe it should be a last-resort measure—if the evidence can be obtained in a less invasive way, that option should be used first.
- I think the JR’s decision in this case is correct, as there was no actual evidence that the infringing method of achieving the patented technical result was used.
- I also believe that “plausibility” is the correct criterion. It lies somewhere between no evidence and the “more likely than not” test for obtaining a PI.
11 March 2025
Local Division Munich, Syngenta v Sumi
Revoking PI
Request
Sumi argues that Syngenta did not file a case on the merits in time. The 20 working days expired on 27 September, and the case on the merits was only started on 30 September.
The JR