Syngenta v Sumi Agro & Anor (UPC_CFI_201/2024)
Decision date:
27 August 2024
Osborne Clarke summary
- Syngenta is the owner of a European patent covering a herbicide composition for controlling weeds. Syngenta brought an action for provisional measures against Sumi after Sumi obtained marketing authorisations for its product in several jurisdictions inside and outside the UPC.
- The court considered whether the marketing of a product with the same name outside the jurisdiction of the UPC would create an imminent risk of patent infringement inside the UPC jurisdiction. Sumi was advertising its product in the Czech Republic and Poland, but Syngenta later discovered that Sumi was also advertising within the jurisdiction of the UPC (including in Germany).
- Syngenta then applied for a preliminary injunction against Sumi in the UPC. Sumi argued that the product advertised in the UPC did not infringe the patent as it had a different composition to the version sold in the Czech Republic. Sumi also raised invalidity arguments against the patent and maintained that Syngenta had unreasonably delayed its preliminary injunction application.
- The Munich LD granted the preliminary injunction. The court explained that it was not possible to evaluate all invalidity arguments in preliminary injunction proceedings, and that consideration must be limited to the respondents' three most relevant arguments. The top three arguments did not convince the court that the patent was invalid.
- The court decided that although the product marketed in the UPC might differ, the fact that the brand name for the product within the UPC was the same as the infringing product outside the UPC presented a risk of imminent infringement within the UPC. The risk of imminent infringement was deemed to underscore the necessity of the preliminary injunction as required by Rule 206.2(c) RoP.
- Syngenta had been aware of the marketing authorisation granted in Germany in August 2023, and marketing started in January 2024. It then brought its application for provisional measures in April 2024. The Munich LD decided that the request was justified under Rule 206.22(c) RoP and found that the urgency requirement under Rules 209.2(b) and 211.4 RoP were met. The court explained that given the need to gather evidence across multiple jurisdictions, a two month safe harbour was appropriate for the applicant.
- The Munich LD lastly noted that the weighing of interests also favoured the grant of the preliminary injunction. The court particularly noted that the patent in suit expires in 2028 and denying the preliminary injunction would have deprived Syngenta of 20% of the remaining monopoly of the patent, which would amount to a substantial part of the commercial value.
Issue
Curious about how UPC decisions might impact your business? Have questions about the UPC?
Reach out to our patents team for expert guidance and support.