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First UPC preliminary injunction granted to biotech company

Posted: September 26, 2023

The UPC is a new unified court system covering 17 countries who have ratified the UPC Agreement.

The UPC entered into force on 1 June 2023 and has exclusive jurisdiction for infringement and validity disputes of unitary patents and granted European patents (which have not been opted out of the central UPC court system).

10x Genomics, a US biotech company, has been granted the first preliminary injunction by the local division of the UPC in Munich, in respect of their unitary patent.

The decision was granted without security for costs, so there is no delay for enforcing the injunction.

The preliminary injunction prevents NanoString Technologies from selling their CosMx Spatial Molecular Imager (SMI) products for RNA detection in the 17 states that have ratified the UPC Agreement (Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, Sweden).

NanoString Technologies has indicated that they will appeal this decision.  If an appeal is brought by NanoString Technologies, this would be heard at the UPC Court of Appeal in Luxembourg.

The unitary patent in question is still within the 9-month opposition period at the EPO and NanoString Technologies has already filed an opposition against the patent.  If the patent is revoked during the EPO opposition period, then it will be interesting to see if the UPC awards damages to NanoString Technologies for granting the preliminary injunction.

The UPC is expected to make a separate ruling on a preliminary injunction between the two parties in respect of the parent European patent in October.  NanoString Technologies has also filed for revocation of the parent European patent at the UPC.

The opposition before the EPO on the unitary patent will likely continue for the next 15 (or more) months, so it is assumed that the UPC will reach their own conclusion on the validity of the parent (EP) patent before the opposition against the unitary patent is heard at the EPO.

This case provides an interesting example of the legal routes available to enforce or revoke a family of patents, depending on whether there is a unitary patent or a European patent, and we look forward to seeing how these decisions will interplay between the UPC and the opposition division at the EPO.