UPC New Year round-up - Jan 2024

Europe's Unified Patent Court highlights

To kick off 2024 and catch up on the end of 2023 in case you missed anything, we have put together a quick summary of the key issues arising from decisions from Europe’s new Unified Patent Court over the new year period.

No stay versus the EPO

The first decision asking for a stay of the UPC due to an EPO opposition has been rejected, with an OD hearing only a few months away not being enough to stay (or slow) UPC proceedings. This rings true with the sense in many decisions or judicial discussions that the UPC is keen to get on with its cases. But the refusal gave permission to appeal given the importance of getting this approach right. Pending any clarification or change, we may have to wait for a case where opposition proceedings are nearer a TBA hearing to test the UPC’s appetite to keep momentum.

Local divisions willing and able to hear validity and infringement

Despite some cases seeing more complex parallel proceeding and ‘bifurcation with a twist’ (per our recent article), there has now been a hat trick of decisions in the Düsseldorf local division where the more straightforward, expected outcome is arising – i.e. the local division being more than happy (with the aid of a technically qualified judge) to proceed with both infringement and validity.

Service

Service of UPC proceedings on foreign defendants may not be straightforward via EU based group companies. Other routes needs to be tried first, potentially resulting in long delays via e.g. the Hague Convention. Such disputes may be avoided by the parties’ agreement, which the UPC has been willing to order in other cases (involving the same parties). If delays do result with respect to foreign defendants, the tone in other case management decisions suggests that the UPC may split proceedings and not delay the timeline on defendants served more straightforwardly. The likelihood and impact of this on proceedings remains to be seen.

Language

Proceedings may not be easily switched to English, especially if the defendant requesting the change has not acted expeditiously in the face of their imminently due Defence. This does not rule out a language change being made later (e.g. under less pressure or on appeal), but this remains uncertain. This occurred in a case where (at the moment) only seen the appeal decision is available; not the underlying first instance decision by the President that refused the switch (and was unsuccessfully appealed).

File wrapper estoppel / construction

The prosecution history or ‘file-wrapper estoppel’ has been used to aid construction of an amended patent claim, in a decision rejecting provisional measures (PI) on the basis of doubts over infringement (supporting the central importance of this over other PI grounds at the UPC). This is an interesting example of the international and pragmatic nature of the UPC as this case: (i) involved a multitude of international parties (and representatives); (ii) was before the Munich Local Division; (iii) had a judicial panel comprising Dutch and German legally qualified judges; and (iv) resulted in a first instance outcome that seems more amenable under Dutch national law and arguably prohibited under German national law.

First seizure

The Paris Local Division has granted its first ex parte seizure, showing the potential likelihood for UPC local divisions to award remedies associated previously with their geographic reputation. In this case: a ‘saisie’ in Paris, following the trend of some of the first UPC orders awarding a ‘descrizione’ in Milan.

Interveners beware

You need a true legal interest in the case in question, and may find it difficult to join in appeals on points of policy, even if they have been involved in parallel / similar cases. This relates to the appeal concerning access to UPC court documents, which is otherwise pending.

Appealing interim decision

Where a preliminary objection is deferred to main proceedings, this is neither a rejection nor an allowance and so cannot be appealed. But such a decision may be reviewed and there is now going to be an appeal of a refusal to review this type of decision.

Appellate panels

The UPC Court of Appeal can decide on certain procedural issues with a panel of only 3 legally qualified judges. The appointment of two more judges (technically qualified) on the appeal panel will not be necessary where it would otherwise hinder procedural efficiency.

Defence deadlines

Defences to counterclaims for revocation are due 2 months after the counterclaim (the 10 day extension to service in RoP 271(6)(b) only apples to Statements of Claims).

Adding patents

Despite the majority of cases being about one patent, or being split in separate claim each with one patent from the outset, a second patent can be successfully added to a claim. However, this may be split into a separate Workflow in the CMS. And the impact on the value (and fee) needs to be considered.

Splitting out patents/claims

In another case involving multiple patent and defendants, the UPC has ordered the splitting of different patents but not vis-à-vis different (unrelated) defendants. Where split out, the claim against each patent seems to require reconstruction from scratch in a new CMS workflow; and adjustments to value/fees again must be considered.