UPC Court of Appeal says Ireland is not a contracting member state

The Court of Appeal has temporarily suspended a PI with effect for Ireland. In late June, the local division The Hague issued two opposing rulings in the dispute over continuous glucose-monitoring devices (CGM) between market leader Abbott and the Chinese newcomer SiBio and the latter’s distribution partner Umedwings.

In one case, the judges led by presiding judge Edger Brinkman rejected a PI application. In a second case, they granted Abbott the PI, with the result that SiBio may no longer distribute its CGM devices in Germany, France, the Netherlands and Ireland. SiBio appealed the ruling. Abbott has also appealed some aspects of the first-instance ruling.

PI for Ireland disputed

In its statement of appeal SiBio requested that “the appeal should have suspensive effect or alternatively, that the appeal has suspensive effect to the extent that the application for provisional measures was granted for the territory of Ireland”.

The Court of Appeal took this as an opportunity to decide not only on the suspension of the PI pending the appeal judgment, but also on the question of whether the local division should have granted the PI for Ireland. The judges on the second panel, led by Rian Kalden, now seem to have doubts about the latter.

A fundamental question

Although Ireland has signed the UPC Agreement, it has not yet ratified it. This first requires the approval of the Irish population in a referendum. The Irish government recently postponed this. It has not yet set a new date.

In their order on the dispute over CGM devices, Rian Kalden, Patricia Rombach and Ingeborg Simonsson have now ruled that “Ireland is not a Contracting Member State and thus cannot be considered to be covered by Abbott’s request for a preliminary injunction. The Court of First Instance therefore awarded more than what was requested for, which is contrary to Art. 76 UPCA”.

Furthermore, the judges wrote, “Only countries that have not only signed but also ratified the UPCA are Contracting Member States.” They describe the judgment of the local division The Hague as “clearly erroneous”.

Consequently, they have provisionally suspended the PI for Ireland (case ID: UPC_CoA_388/2024). However, it remains in force in the Netherlands, Germany and France. According to the judges, the suspension of a PI can only be considered in special circumstances.

Showdown in main hearing

The appeal proceedings must now clarify whether the PI ruling of the local division The Hague was fundamentally wrong.

The Court of Appeal has not yet set a date for the hearing. However, the Ireland issue will certainly be up for discussion. Theoretically, the court could come to a different conclusion. It may even refer the question to the CJEU. For the time being, the current decision only affects the suspensive effect of the PI.

Speed bumps on Irish route

On 1 September Romania will be the 18th country to join the UPC. Five other EU countries in addition to Ireland have signed the UPC Agreement but not yet ratified it. These are Cyprus, the Czech Republic, Greece, Hungary and Slovakia.

The UPC could also issue PIs for these countries if the Court of Appeal judges confirm the ruling of the local division The Hague in the appeal proceedings.

However, should they again conclude that Ireland is not a contracting member state, this could also have consequences for Irish and UK lawyers who have registered with the UPC with an Irish licence to practise.

Experts dispute whether these lawyers will be able to practise at the UPC if the Court of Appeal finds Ireland is not a contracting member until ratification.

Taylor Wessing vs Simmons & Simmons

The dispute essentially pits two large teams against each other. Their international law firms are among those with the most UPC cases on the plaintiff side. Taylor Wessing has been the go-to law firm for Abbott for years.

Eelco Bergsma and Wim Maas had the lead for Abbott in both Dutch proceedings. Abbott obtained technical advice from the two AOMB patent attorneys Peter Haartsen and Raimond Haan.

SiBio and Umedwings are relying on the support of Simmons & Simmons in all three proceedings, with Munich partner Thomas Gniadek in the lead. Amsterdam partner Oscar Lamme provided support, together with the two patent attorneys Fritz Lahrtz (partner, Munich) and Diptanil Debbarma (associate, Amsterdam).