UPC Preliminary Injunctions: Presumption of ownership principle confirmed

On 31 October, the Dusseldorf Local Division issued its decisions on the matter of preliminary injunctions requested by Valeo Electrification against three companies in the Magna group, citing infringement of two of their European patents.

In their defence, Magna claimed that the injunctions should not be granted, in part because Valeo were supposedly not entitled to commence proceedings under the patent. Magna argued that the subject matter of the patents had been unlawfully extracted from an earlier collaboration between Valeo and Magna, and that Valeo were not entitled to the patents under which the actions were brought.

The UPC is not in itself competent to hear entitlement actions, and so the question as to whether Valeo are entitled to ownership of the patent will eventually have to be addressed in the national Courts in which the patent is in force. However, the decision on whether to grant a preliminary injunction requires that it is more likely than not that the Applicant is entitled to the patent in question. In deciding on whether to grant the preliminary injunctions, the Court pointed to Rule 8.5 of the Rules of Procedure, which recites:

“there shall be a rebuttable presumption that the person shown in each national patent register and the European Patent Register kept by the European Patent Office is the person entitled to be registered as proprietor or applicant as the case may be”.

In light of this, and in light of the fact that Magna had waited more than six years after publication of the patents in question to bring an entitlement action, the Court found that Magna had insufficiently disputed the rebuttable presumption, and so Magna’s defence on this matter was dismissed.

If a putative infringer does consider that it has an entitlement claim to a patent that may be asserted against it in the future, the lesson to be learnt is that steps should be taken ahead of time, through the national courts, to seek to have the entitlement issue determined.  Failure to do so, may result in injunction relief being granted.