Short Summary
Promosome LLC brought a patent infringement action before the Local Division Munich of the Unified Patent Court against BioNTech and Pfizer entities concerning European patent EP 2 401 365, targeting several Comirnaty® COVID-19 vaccine variants. The defendants raised a preliminary objection challenging the UPC's jurisdiction over the Comirnaty® Original/Omicron BA.1 variant (embodiment 2b), arguing it was produced and sold only before 1 June 2023, making jurisdiction contrary to the non-retroactivity principle under Art. 28 VCLT. The judge-rapporteur held that the preliminary objection was admissible but deferred its final determination to the main proceedings under Rule 20.2 RoP, pending a related Court of Appeal decision.
Detailed Summary
Promosome LLC (Claimant) filed a patent infringement action before the Local Division Munich of the Unified Patent Court (UPC) under Art. 3(c) and Art. 32(1)(a) of the Agreement on a Unified Patent Court (UPCA), relying on European patent EP 2 401 365. The action was directed against several variants of the Comirnaty® COVID-19 vaccines developed and marketed by the BioNTech and Pfizer defendants, namely: Comirnaty® Original (embodiment 2a), Comirnaty® Original/Omicron BA.1 (embodiment 2b), Comirnaty® Original/Omicron BA.4-5 (embodiment 2c), Comirnaty® Omicron XBB.1.5 (embodiment 2d), and Comirnaty® JN.1 (embodiment 2e).
On 7 March 2025, the defendants raised preliminary objections (Rule 19.1(a) RoP) challenging the UPC's jurisdiction. The defendants did not contest jurisdiction over Comirnaty® variants sold on or after 1 June 2023 (embodiments 2a and 2c–2e), but objected to jurisdiction over embodiment 2b (Comirnaty® Original/Omicron BA.1), which they claimed was produced and sold only before 1 June 2023. They argued that assuming jurisdiction over such concluded acts would violate the principle of international law that treaties have no retrospective effect, as codified in Art. 28 of the Vienna Convention on the Law of Treaties (VCLT). They contended that the UPC is silent on retroactivity and contains no provisions allowing such an interpretation.
The Claimant countered that the existence of different infringing products obtained by the same infringing method does not change the continuous nature of the infringing use. The Claimant further argued that the defendants had not substantiated their claim that embodiment 2b was not produced or sold after 1 June 2023, and had not addressed other potentially infringing activities such as offering, placing on the market, or storing. The Claimant also pointed to existing UPC case law holding that the UPC has jurisdiction over infringing acts that were ongoing and/or concluded prior to 1 June 2023.
The judge-rapporteur, András Kupecz, found that the preliminary objection was duly filed in accordance with Rules 19.1(a), 19.2, and 19.3 RoP, and that it was permissible to base such an objection on alleged lack of jurisdiction over acts committed in certain time periods. On the merits, the judge-rapporteur expressed his non-binding view concurring with prior UPC case law (including LD Mannheim's order in Fingon/Samsung and LD Munich's order in Industria Lombarda Materiale Elettrico/PHOENIX CONTACT) that the UPC's subject matter competence covers allegedly infringing acts committed before the UPCA's entry into force, and that this does not constitute retroactive application of the treaty.
However, the judge-rapporteur declined to conclusively decide the preliminary objection at this stage, noting that the defendants had not challenged jurisdiction over embodiments sold on or after 1 June 2023, meaning the action would proceed in any event under Rule 19.7 RoP. Given that an appeal was pending from the LD Munich order in Industria Lombarda Materiale Elettrico/PHOENIX CONTACT before the Court of Appeal, the judge-rapporteur considered it most efficient to defer the preliminary objection to the main proceedings under Rule 20.2 RoP, so that the outcome of the appeal could be taken into account. The judge-rapporteur also noted that competence/jurisdiction and applicable law are separate issues to be assessed separately, inviting the parties to address applicable law in their regular pleadings.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Munich (DE) Local Division. Understanding the court's reasoning in Promosome LLC vs BioNTech SE and Others is valuable context for structuring arguments or assessing risk in similar proceedings.
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