REGISTER now: Sweden Event - A new era for innovation: AI, the UPC and global patent opportunities
​

UPC Declines to Grant Provisional Injunction

​
Darren Smyth
​
January 8, 2024
Additional information
Chevron icon
Info
Tags
UPC
Recent cases
Infringement
Provisional injunction
Table of contents
Chevron icon
Table of contents
  • Toc Heading
  • Toc Heading

SES-imagotag SA v Hanshow Technology Co. Ltd. and others UPC_CFI_292/2023

Order of 20 December 2023 (ORD_596193/2023)[1]

SES-imagotag is the proprietor of EP 3883277, which had been opted out of the jurisdiction of the UPC, then this opt out was withdrawn and unitary effect requested. The patent relates to electronic labels, and the patentee alleged infringement by Hanshow Technology and distribution companies based in France, Germany and the Netherlands, in particular by electronic labels of the "Nebular" and "Stellar" series, and sought a provisional injunction to restrain infringement by these labels.

The Munich local division rejected a challenge to its competence by the defendants, pointing out that one of the alleged acts of infringement was a use in a Munich supermarket. It was not relevant to the question of jurisdiction whether that act was finally adjudged to be an infringement. The court also decided that all the alleged infringing acts in Europe were attributable to all the defendants, so that jurisdiction could be exercised over all of them.

However, the court was not convinced with sufficient certainty that the patent was infringed. In particular, it considered that the location of the antenna on the alleged infringing products was not in accordance with the claim definition. Interestingly, the court looked at both the granted claim wording, but also the original claim wording which was amended during prosecution, in arriving at its claim construction.

Accordingly, the court declined to grant a provisional injunction and ordered the patentee to pay the defendant's costs of the action, capped at €200,000 based on setting the value of the case at €2,000,000. The recoverable costs were ordered to include the costs associated with the preparation of a protective letter (Rule 207 RoP), which had been filed a few days before the provisional injunction application.

In view of its findings on infringement, the court declined to consider the validity of the asserted patent.


[1] https://www.unified-patent-court.org/en/node/522

Recent Case Reports

See all Case Reports

Court of Appeal focuses on the technical effect to determine added matter
30 September 2026
The Court of Appeal provided guidance on their approach to assessing added subject matter, highlighting that the technical effect underlying the invention and how the claimed and unclaimed features contribute thereto is central to the analysis.
​
Court of Appeal affirms interpretation of product-by-process features in claims, and clarifies applicable law pre-June 2023
29 September 2026
The Court of Appeal confirmed that product-by-process features in a product claim limit the claim only where the specified process imparts characteristics that can be achieved solely by that process. It also clarified the law applicable to acts occurring before 1 June 2023, holding that UPC law may apply to ongoing infringement for injunctive relief, whereas damages for acts completed before that date are governed by national law, and that claims for provisional protection remain governed by national law.
​
Appeal reveals tricky deadlines for orders contained in decisions
29 September 2026
The Court of Appeal held that where a “privileged order” under Rule 220(1)(c), such as an order relating to the production of evidence under Article 59 UPCA and Rule 190 RoP, is contained within a decision on the merits, a 15 day appeal deadline for that order applies, separate from the substantive appeal deadline. Appeals challenging such orders after that deadline are inadmissible, and parties cannot circumvent the appeal rules by re-filing substantially the same request in the appeal proceedings.
​