In the case of Syngenta v Sumi Agro, the Munich Local Division (LD) of the UPC granted a preliminary injunction to Syngenta (ORD_47657/2024 ACT_23636/2024). In the decision, the Court found that distributing a patent infringing product outside the UPC Contracting States and advertising a product under the same name within a UPC Contracting State, can create a risk that patent-infringing products will be manufactured, advertised and distributed in the UPC Contracting States in the future.

Despite the value of the action being set at five million EUR, this PI is enforceable without the need for placing a bond. The decision also confirms the Munich LD’s approach to urgency for requests for provisional measures, adhering to the previously set two month safe harbour. However, this period is measured as of the point in time where the patentee has managed to gather all necessary information for requesting a PI, e.g. after experiments.

Background

The case was based on Syngenta’s European Patent 2152073 (the patent) relating to herbicide compositions.  Syngenta asserted that Sumi Agro’s herbicide product marketed under the trade name “Kagura” or “Genki” (referred to only as Kagura here) directly infringed claim 1 of the patent.

Kagura was marketed outside the UPC territory – in Poland and Czech Republic – and inside the UPC territory – in Germany and Bulgaria.  Sumi Agro argued that they marketed two versions of Kagura, and that the version marketed inside the UPC territory did not contain all of the features of claim 1 of the patent.  Sumi Agro also argued that the patent was anyway invalid because claim 1 lacked at least novelty and inventive step.

Imminent danger of infringement in UPC territory

Syngenta asserted that it first became aware of Kagura around April 2023 when it was found in the Czech Republic (and thus outside the UPC territory).  Syngenta obtained a sample of this version of Kagura from the Czech Republic (referred to as “the 2023 product”) and carried out chemical analysis of the formulation twice.  Syngenta stated that this analysis demonstrated that the 2023 product contained all of the features of claim 1 of the patent.

Syngenta denied the existence of a second version of Kagura and the dispute was therefore based upon the 2023 product.  In particular, the Court had to assess whether there was a likelihood of repetition or a likelihood of first infringement on the basis of the 2023 product obtained by Syngenta.

After consideration of the chemical analysis evidence provided by Syngenta, and in particular hearing the scientist having ran the experiments, the Court was sufficiently convinced that the 2023 product – distributed outside the UPC territory in Czech Republic – directly infringed claim 1 of the patent.  The Court held that by distributing the 2023 product outside the UPC Contracting States and by advertising “KAGURA” within the contracting states, Sumi Agro had created a risk that patent-infringing compositions will be manufactured, advertised and distributed in the UPC territory.

In reaching this conclusion, the Court noted that Sumi Agro had obtained identical marketing authorisations for a product with the same name in various member states of the UPC.  In addition, the Court noted that Sumi Agro had advertised “KAGURA” within UPC member states without indicating that the recipe had changed in a way that it did not infringe the patent.  The Court held that this behaviour constituted at least a risk of infringement in the UPC territory.

With regards to the alleged second version of Kagura, the Court held that even if there was a second version and this version did not include all of the features of claim 1 of the patent, the risk of infringement had not been eliminated because Sumi Agro had not offered a cease-and-desist declaration with a penalty clause in respect of the 2023 product.

On this point, the Court referred to national law where it is generally accepted that the risk of infringement can be removed by an actus contrarius or, in special circumstances, a formal cease-and-desist declaration, preferably with a penalty clause.  The Court did not see any reason to depart from this in the context of the UPC agreement (UPCA) and corresponding Rules of Procedure (RoP).

Sufficient certainty of validity

When it came to validity, the Court reiterated its position from Hand Held Products, inc. v Scandit AG (ORD_46277/2024 ACT_9216/2024) that due to the summary nature of the validity examinations in proceedings for grant of provisional measures, the number of arguments raised against the validity must generally be reduced to the best three from the respondents’ point of view.  However, in other decisions on appeal from the LD Munich, it is to be noted that the Court of Appeal has already rejected this approach to limiting validity assessment in PIs to three attacks. In this case, the Court found that none of the arguments presented by Sumi Agro raised any significant doubts as to the validity of claim 1.  On the contrary, the Court was sufficiently assured of the patent’s validity.

Two month safe harbour

Sumi Agro had argued that Syngenta delayed bringing proceedings and that Syngenta would have been aware of the marketing authorisation granted in Germany for Kagura in August 2023 and the subsequent marketing activity in Germany from early January 2024.  This was in particular due to the fact that parties had been in discussions since 2023 and so it was to be assumed that Syngenta would have been following closely the roll out of this product in Europe. However, the Court held that Sumi Agro had not provided any evidence of actual prior knowledge of Syngenta before March 2024 and therefore found that Syngenta only became aware of marketing activities in Germany in March 2024 (specifically 18th March 2024).  In reaching this conclusion, the Court confirmed that knowledge of Sumi Agro’s activities in non-UPC member states was irrelevant as Syngenta could not have foreseen that these activities would start in UPC member states.

The Court subsequently ruled that Syngenta’s application for provisional measures filed on 30th April 2024 had been filed on time.  The Court acknowledged the diverging case law on this point (e.g., from the Dusseldorf LD in UPC_CFI_452/2023, which granted the applicant only one month to bring an action).  However, the Court held that in the context of a dispute involving more than one participating member state, the UPC representative for the applicant must be given sufficient time as a safe harbour period to prepare the written request and the accompanying evidence and to discuss the prepared documents with the client.  The Court acknowledged that this takes time.

Therefore, in the absence of any guidance from the Court of Appeal, the Court adhered to its two-month safe harbour for cases in involving more than one participating member state and where the applicant requests a prior hearing of the respondent.  However, the Court held that if the applicant exceptionally requests provisional measures without prior hearing of the respondent, no safe harbour time limit is provided.

Reflections

The key takeaways from this decision are:

• Advertising a product within a UPC member state using the same name as a product being distributed outside the UPC territory can create a risk of infringement within the UPC member state. This risk can be eliminated by an actus contrarius similar to national law.
• The Munich LD provides a period of two months from the applicant becoming aware of potential infringement for bringing an action for inter partes preliminary measures. If the applicant exceptionally requests provisional measures without prior hearing of the respondent, no safe harbour time period is to be provided.
• This safe harbour period does not include the time to do experiments as the PI applicant should have the time to investigate an alleged infringement before the safe harbour period starts, in particular they should “take the necessary steps to clarify the matter and obtain the necessary documents to support its submission. In doing so, the applicant must pursue the necessary steps with determination and bring them to a conclusion.”