Proceeding Decision

1. In case of a product claim directed to a composition it is sufficient for the applicant to allege and prove that at the time of any act of use under Art. 25 UPCA by the respondent, the attacked composition had all the features of the patent claim or that there is an imminent danger that such an act of use directed to such a composition will be carried out by the respondent in the future. It is not on the applicant to plead and prove why the composition had all features of the patent claim. 2. Distributing a patent infringing composition outside the Contracting States and advertising a composition under the same name within the Contracting States, can create a risk of first infringement that patent-infringing compositions will be manufactured, advertised and distributed in the territory of the Contracting States in the future. 3. In the circumstances of this case, in order to eliminate the risk of first infringement, the respondents should have offered a cease-and-desist declaration with a penalty clause. An actus contrarius is not sufficient. 4. In proceedings for the grant of provisional measures, a full examination of all the arguments raised against the validity of the patent-in-suit, which may be numerous as in nullity proceedings, is not possible. Rather, the number of arguments raised against the validity of the patent must generally be reduced to the best three from the respondent's point of view (UPC_CFI_443/2023 ACT_589207/2023 (LD Munich), order of 21 May 2024, 3rd LS). The background to this is that while a summary assessment of factual issues is conceivable, a summary examination of legal issues is not. The court can either examine a legal issue or not. If the court decides to examine the issue, it will do so comprehensively. The only way to take account of the summary nature of the procedure is therefore to reduce the number of legal issues to be fully examined in this way. This is made clear by the requirement to limit the number of arguments to three. Since it is the respondent's responsibility to challenge the presumption of validity, it is primarily the respondent's responsibility to select the three arguments to be examined in detail by the panel in summary proceedings. 5. In view of the diverging case law on temporal urgency, which grants the applicant only one month, e.g. in UPC_CFI_452/2023 (Local Division Düsseldorf), order of 9 April 2024, GRUR-RS 2024, 7207, Rz. 128, the Local Division Munich adheres to its case law granting two months.

product claim, burden of pleading and proof, Application for provisional measures, safe harbour period two months, risk of first infringement, temporal urgency, composition, cease-and-desist declaration, number of arguments as to validity