Van Dongen on Proportionality and Injunctions in the UPC

Lisa Van Dongen has posted a paper on ssrn titled Proportionality and Flexibilities in Final Injunctive Relief, forthcoming in The Unified Patent Court: Problems, Possible Improvements and Alternatives (Alain Strowel et al. eds., Ledizioni, 2023).  Here is a link to the paper, and here is the abstract:

          In 2006, the patent world was shaken to the core by eBay v MercExchange, a case that questioned several basic principles in patent enforcement that were considered well established. The US Supreme Court sent a clear signal that patent rights were not to be considered absolute, and courts should thus not enforce them in automated fashion with injunctive relief. This case has received considerable attention globally, with many patent scholars analysing it in meticulous detail and questioning the European approach. Even though there is no agreement in the field on the optimal balance in patent enforcement (and likely never will be), even the most adamant proponents of strong patent enforcement agree that there may be other interests that merit the denial or tailoring of final injunctive relief. Yet, the automated tendencies in patent enforcement in Europe - the finding of an infringement automatically leading to the (blanket) grant of a permanent injunction - remain not only as prevalent as they have been for several decades, but also without any clear departures by courts (apart from English judges) from such tendencies indicative of course changes. What is more, is that the possibility for Europe to break with automated tendencies in enforcement will soon be further complicated by the addition of another layer to Europe’s existing patent systems, namely by the creation of the Unified Patent Court (UPC) and the unitary patent. If this system takes off, decisions of this new court will carry significant weight in European patent enforcement due to several organisational and territorial aspects. The UPC has even been described as a potential judicial counterbalance to pro-patent tendencies in patent offices, particularly the European Patent Office (EPO). However, considering the strange construct of its creation, it is questionable that the UPC will be that judicial counterbalance and lead the way for other courts in Europe. Some of these aspects might also create some tension with other systems it will have to co-exist and interact with. A closer look is thus imperative. This paper aims to do just that, testing the hypothesis: The UPC will not bring about a change in the current automated tendencies in granting final injunctions, but rather cement them. This paper explains why there will be no push from the EU to try and do so based on the current status of EU harmonisation in patent enforcement, questions the UPC’s capability and willingness to break with the existing automated tendencies based on the UPCA’s formulations and organisational features of the UPC, and explores some legislative solutions at the European level to move Europe away from automated tendencies in patent enforcement.

This is an insightful paper, and I suspect that the author is correct in predicting that the UPC will not depart from the status quo in favor of near-automatic granting of injunctive relief to the prevailing patent owner.  Her recommendation that the EU consider legislation providing more detail on when and how proportionality might result in limitations on (tailoring) injunctive relief, or in some instances denying such relief altogether, seems to have merit.