Proportionality considerations in proceedings before the UPC

Since the publication of the UPCA, there has been discussion whether an injunction is within the court’s discretion, subject to proportionality considerations or the automatic consequence of patent infringement. Art. 63 (1) UPCA does not explicitly provide for a proportionality test before an injunction can be handed down but states that the court “may” grant an injunction. This is also reflected in Art. 64 (1) UPCA, according to which the court “may” order corrective measures. In addition, Art. 64 (4) UPCA explicitly states that the court shall consider the

This has given rise to the question whether the UPC has discretion to hand down the injunction or not and to what extent. While the disproportionality defense has been raised many times in multiple proceedings, the UPC appears to have (partially) followed the disproportionality defense only in few cases so far.  

In Belkin v. Philips (Court of Appeal, decision of 3 October 2025, UPC_CoA_534/2024), the disproportionality defense was not successful, but the Court of Appeal pointed out where the order of corrective measures can be disproportionate. The Court of Appeal found that the patent proprietor is entitled to corrective measures when the patent is infringed, which means these are not within the court’s discretion. Art. 64 UPCA implements Art. 10 of the Enforcement Directive which aims for a high level of protection for intellectual property rights which can only be guaranteed if corrective measures are the norm and their denial an exception. The order of corrective measures can be disproportionate where infringement is minor, or the infringer is willing and able to convert the attacked embodiment into a non-infringing state. In this assessment, all circumstances of the case must be considered and thus, a serious infringement can justify corrective measures even if the infringer is willing and able to eliminate the infringing nature of the attacked embodiment. While the recall of infringing products always affects the infringer’s customer relations and the removal from the distribution channels is always burdensome for the infringer, this does not justify a denial of corrective measures. Finally, the court found that it is not on the patent proprietor to demonstrate the proportionality of corrective measures. When the patent is infringed, the order of corrective measures is the usual consequence and thus it is the infringer that bears the burden of proof for the lack of proportionality, its willingness to convert the attacked embodiment into a non-infringing state and the interests of third parties. Only once the infringer has satisfied this burden of proof and presentation, is the patent proprietor required to reply. 

In the preliminary proceeding Valeo v. Magna (Duesseldorf Local Division, decision of 31 October 2024, UPC_CFI_368/2024), the Duesseldorf Local Division limited the scope of the preliminary injunction. When weighing the parties’ interests, the court excluded certain products from the scope of the decision to address considerable damages the Defendant would suffer in the event of the grant of the preliminary injunction. The court did not consider the provision of security as being suitable to address threatening damages as the required amount of security would render the preliminary injunction ineffective.

Concerning the grant of a permanent injunction, the Court of Appeal confirmed in Edwards v. Meril (Court of Appeal, decision of 25 November 2025, UPC_CoA_464/2025), that the injunction and corrective measures are not within the court’s discretion, as already held in Belkin v. Philips (Court of Appeal, decision of 3 October 2025, UPC_CoA_534/2024). The court again underlined that the patent proprietor is entitled to injunctive relief and corrective measures following its civil law claim laid down in Art. 63, 64 UPCA implementing Art. 10, 11 of the Enforcement Directive which requires a high level of protection for intellectual property rights. As the patent proprietor may not be deprived from enforcing these rights, courts shall issue an injunction, unless there are special reasons that justify an exception. Such exceptions can be made in the light of proportionality, a principle following from both Art. 3 of the Enforcement Directive and general principles of EU law. Therefore, the Court of Appeal has stressed again the exemptional character of denying an injunction in the light of proportionality considerations.

Against this background, the Court of Appeal confirmed that Meril’s XL valve prostheses may be carved out from the injunction to satisfy proportionality.  As these devices lack an alternative, patients had a legitimate interest in their availability.  When assessing proportionality, the court may not only consider the parties’ interest but may also take into account third party interests, such as patients’ interests. If an embodiment is “the sole available treatment method” or constitutes an “improvement upon available treatment methods, resulting in a notable enhancement of patientcare”, patients’ interests may justify restricting the scope of an injunction. As concerns the future implementation of XL devices, not being scheduled yet, the Munich Local Division as the court of first instance considered patients’ interest to be satisfied by Edwards granting exceptions to the injunction upon requests by physicians via Edwards’ Medical Request Portal. However, the Court of Appeal did not agree with that. Where Meril’s XL devices do not have an alternative, it should not be dependent on the maintenance of the Medical Request Portal and Edwards’ approval. Rather, it is sufficient when a physician indicates the intention to use Meril’s XL valves and confirms the lack of an equivalent. 

In conclusion, it can be stated that the injunction is not within the court’s discretion. As a principle, the court shall grant an injunction and order corrective measures when the patent is infringed. Only as an exemption can the court derive from that principle when special reasons such as proportionality considerations justify denying an injunction. The test of proportionality very much depends on the circumstances of the specific case. When assessing proportionality, the court may not only consider the parties’ interests but may also take into account the interests of third parties, such as patients. To satisfy proportionality, certain products may be carved out from the scope of the injunction. As per medical devices, this can be justified when the attacked embodiment lacks an alternative or constitutes a significant enhancement over available treatment methods. In preliminary injunction proceedings, the court also may exclude certain products to address threatening damages when weighing the parties’ interests.