2024-11-22 - LD Milan - Insulet v. Menarini - UPC_CFI_400/2024

1. In proceedings for provisional measures, the Applicant is required to provide cumulatively reasonable evidence to satisfy the Court with a sufficient degree of certainty that: (i) the Applicant is entitled to initiate proceedings under Art. 47 UPCA; (ii) the patent is valid; (iii) its rights are being infringed or that such infringement is imminent (Rule 211.2 RoP). Additionally, the balance of interests must be in favour of the Applicant (Rule 211.3. RoP). Therefore, the absence of any one of these requirements is sufficient to warrant dismissal of the application. 2. Auxiliary requests to amend the patent pursuant to Rule 30.2 RoP are inadmissible in proceedings for provisional measures. This is consistent with the required expediency of the procedure, which demands both the imminence of prejudice and the necessity to uphold the adversarial principle and the right of defence. 3. The auxiliary request to amend the patent is expressly admitted only in the defence to a counterclaim for revocation (Rule 30.2 RoP) or in the defence to revocation (Rule 50.2 RoP) and it may therefore be lodged only in the main proceedings, before the court with jurisdiction to issue a final decision on the validity of the patent. 4. The phrase “amend its case” in Rule 263.2 RoP refers to any modification of the case by the introduction of a new claim or the substitution of the original claim (“change its claim”). This is therefore a different instrument from the application to amend the patent, which is governed by Rule 30.2 RoP. In proceedings for provisional measures, the former is inadmissible if it constitutes an attempt to introduce a request to amend the patent.

The Milan Local Division rejected an application for provisional measures due to the lack of certainty that the patent in dispute was valid. The court explained the inadmissibility of an application to amend the patent in proceedings on provisional measures and the requirements of Rule 263.