First anniversary of the Unified Patent Court: benefits, drawbacks, and the road ahead
After more than 40 years in the making, the one-year anniversary of the UPC is a milestone to be celebrated. Despite a record number of opt-outs being filed during the sunrise period, and various issues with the case management system, it is encouraging to see that the court is being used by a range of parties across different technologies. The first instance divisions and the UPC Court of Appeal also appear committed to issuing rapid decisions that seek to harmonise enforcement of European patents across the participating member states.
Before 01 June 2023, there was a lot of speculation and discussion as to the advantages and disadvantages of the UPC. Some reflections on these are set out below, followed by a brief comment on what we may see in the UPC’s second year.
UPC successes
- Pan-European enforcement.
- A well-run court: quick, efficient and cost-effective.
- Language: prominent use of English.
- Avoiding administrative time and cost of opting out.
Several preliminary measures have been granted with effect across Europe. In myStromer AG v Revolt Zycling AG (UPC_CFI_177/2023) the Düsseldorf local division granted an ex parte preliminary injunction with effect in Germany, the Netherlands, France and Italy. Although overturned on appeal, in 10x Genomics Inc v Nanostring Technologies Inc (UPC_CFI_2/2023) the Munich local division granted an inter partes preliminary injunction based on a unitary patent which had effect in all 17 participating member states.
The decisions issued so far have been thorough: preliminary measures are assessed with a detailed infringement and validity analysis, and the court seems able to handle complex technical issues in a competent manner. In Nanostring Technologies Inc v 10x Genomics Inc (UPC_CoA_335/2023), the Court of Appeal presented guidance on claim construction and inventive step, and instead of referring to the evidence filed by the parties, highlighted that the panel included two technically qualified judges: Dr Friedrich and Dr Schuller.
The court is also committed to efficiency; the full oral hearing for the consolidated revocation and infringement actions in Sanofi-Aventis Deutschland GmbH v Amgen Inc (UPC_CFI_1/2023 and UPC_CFI_14/2023) has been scheduled for one day (04 June 2024), and the Munich central division stated “it is the court’s firm intention to conclude the hearing in one day”. This commitment was also seen in Carrier Corporation v BITZER Electronics A/S (UPC_CFI_263/2023) where the Paris central division refused to stay proceedings pending a decision in the parallel European Patent Office (EPO) opposition. The EPO decision was not considered “rapid” because there was no “concrete proof” as to the date it would be issued.
Finally, we may see an increase in proceedings in English following the Court of Appeal guidance in Curio Bioscience Inc v 10x Genomics Inc (UPC_CoA_101/2024) suggesting that a request by a defendant to change the language to that of the patent is likely to be successful.
UPC shortcomings
- Proceedings could be expensive or complex.
- The risk of central revocation.
- An untested court.
- Maintain the status quo.
Apart from the court being untested, these remain largely unchanged. As noted, the court is conducting a detailed infringement and validity analysis when assessing preliminary measures. There is also an emphasis on written procedure. Thus, while UPC proceedings should be more cost-effective compared to multiple national proceedings, it is advisable to front-load actions and this can lead to significant expense.
The avoidance of central revocation and maintaining status quo still appear to be the leading factors for parties not using the UPC and opting-out. For the opt-out to be effective, it has been confirmed that all proprietors for all states must be named (Toyota Motor Europe NV/SA v Neo Wireless GmbH & Co KG: UPC_CFI_361/2023), and an action must not have been started in the UPC, including an action for provisional measures (CUP&CINO Kaffeesystem-Vertrieb GmbH & Co KG v ALPINA COFFEE SYSTEMS GmbH: UPC_CFI_182/2023).
Year two of the UPC: three projections
As we navigate the second year of the new court, we predict the following developments.
Milan central division, Ireland and other EU ratification
The Milan seat of the central division (responsible for IPC class A: human necessities) is expected to start operation in June 2024. It is unlikely that Ireland will join the UPC in 2024 as the Irish referendum has been delayed. Romania has deposited its instrument of ratification on 31 May 2024 and will become the 18th member state of the UPC on 01 September 2024. We wait to see whether this prompts any of the other EU signatories into action.
UPC v EPO
We expect to learn more on the interplay between EPO and UPC proceedings. While the UPC has been reluctant to stay proceedings without concrete proof of when the EPO decision will be issued (Carrier Corporation v BITZER Electronics A/S: UPC_CFI_263/2023) we have yet to see a UPC revocation and an EPO opposition or appeal decision issue on the same patent. This will be of keen interest to European patent attorneys who are able to represent parties in both forums.
An established forum for patent enforcement
With further UPC Court of Appeal decisions on procedure and practice, we expect the continued growth of the court as an established forum for patent enforcement across Europe.
