First published in Landslide, Volume 17, Number 2, 2024. © 2024 by the American Bar Association. Written by Conor Wilman and Tom Carver.

The Unified Patent Court (UPC) has been open for a little over a year, and its first substantive decisions on revocation and infringement actions are starting to come through. The latest statistics published by the UPC at the end of October 2024 show a total of 538 cases received by the Court of First Instance, with 206 infringement actions and 274 revocation actions (including counterclaims).  A skim through the UPC decisions page also shows that a wide range of groups are getting involved in the UPC, from large to small companies and from engineering to pharma, putting to bed the fear that uptake in this new court would be low. This is also reflected in the proportion of European patents for which requests for unitary effect are filed. So far this year, a request for unitary effect has been filed on nearly a quarter of granted European patents. As was expected, the UPC has seen its fair share of teething problems and has developed its own set of idiosyncrasies. This article aims to arm the reader with a little practical knowledge for navigating through this brand-new system and to highlight key features of the court. Key practical aspects include:

• language (and therefore the scope of choice of representative)
• procedure (stays, extensions, and speed of procedure)
• practicalities (this is more of a topic for representatives, but it is good to know the issues that might be faced by them)
• expansion of jurisdiction (the territories covered by the UPC change from time to time)
• transparency (good legal systems should always be transparent about both the decision and the decision-making process) and confidentiality (whether litigants can keep sensitive data or information away from the public).

Some developing legal aspects include:

• interim injunctions
• bifurcation of infringement and validity
• claim construction
• approaches to added matter and inventive step

Language

English is now the dominant language of proceedings at the UPC. Many of the early cases handled by German local divisions were in German, but as the use of the court grows more widespread, English becomes more prevalent, and the court’s top judges expect that trend to continue. As the proportion of cases being conducted in English continues to grow, the involvement of UK firms in the UPC also expands, both by way of UK patent attorneys (one in six of all UPC representatives are UK-based European patent attorneys) and by way of UK solicitors as part of a team. A great advantage of involving a UK team in UPC litigation is that it avoids duplication of instruction and work if there is a parallel action in the UK (bearing in mind that the UK is not subject to the UPC jurisdiction).

The language of proceedings is the language in which the patent was granted if those proceedings are at a central division. However, if proceedings are conducted before a local division, then the language of the patent is only one of several factors that can be considered. For example, in Curio Bioscience v. 10x Genomics, the Court of Appeal also considered the relative size of the parties and the dominant language of the technology field to be relevant. Overall, however, the defendant’s choice of language will prevail if the interests of both parties are considered to be equal.

Procedure

One Year from Start to Finish

It is the UPC’s objective that proceedings before the UPC, which involve written, interim, and oral procedures, are completed within one year. The written procedure can be done and dusted within six months for a revocation action and six or nine months for an infringement action, depending on whether there is a counterclaim.

The contents of the reply and rejoinder stages are limited only to the matters raised in the previous stage, and therefore new lines of attack or combinations of prior art are highly unlikely to be admitted at these stages. Due to the short deadlines, coupled with the front-loaded nature of the court, a significant amount of work needs to be completed with fast turnarounds.

After the written procedure comes the interim procedure. At this stage, the judge-rapporteur, who will be one of the judges on the panel, can decide to hold an interim conference. By default, the interim conference will be held by video conference. In preparation for the interim conference, the judge-rapporteur can order the parties to provide further information or evidence or to lodge specific documents, such as a list of orders sought by a party at the interim conference. The interim conference is essentially a forum between the parties and the judge-rapporteur to enable the court to prepare for the oral hearing. To that end, the judge rapporteur can use the interim conference to identify key issues, dismiss issues, hold preparatory discussions with witnesses and experts, and issue further orders for experiments and additional evidence to be provided. The conference is also used to decide matters such as the value of the proceedings and the schedule for the next steps in the proceedings. After the interim conference is completed, the judge-rapporteur will issue an order setting out the decisions taken.

The interim conference can be short and relatively informal. For example, the interim conference in Bitzer Electronics v. Carrier Corp. lasted 35 minutes. In the lead-up to the interim conference, Carrier lodged requests pursuant to Rule 336 to request that the court use its case management powers under Rule 334 to dismiss late-filed arguments.8 Although arguments that the late-filed arguments should not be dismissed were raised in pleadings during the written procedure, the use of the Rule 336 applications highlighted the matter, which was then heard in the interim conference. In the subsequent order, those late-filed arguments were deemed inadmissible.9 This demonstrated the court’s willingness to consider matters raised by parties, even if those matters are raised in the week prior to the interim conference.

Extensions and Stays

The UPC, across all of its divisions, has been determined to achieve its stated objective of completing actions within a year. This has manifested in very few deadline extensions being granted, and in limited circumstances. One such circumstance involved multiple parties and confidential information, where authorization for information to be made available to different parties occurred at different times. The court is applying the principle that they “should only be used with restraint and only in justified exceptional cases.”

A similar situation is found with regard to stays. The Court of Appeal explained that in principle the default is that the court will not grant a stay. The mere existence of a parallel action, such as a European Patent Office (EPO) opposition, is not sufficient for a stay to be granted, even if such proceedings are accelerated. Thus, it seems stays will only be granted in exceptional cases. Given the difficulty in obtaining stays and extensions, clients need to be prepared and advised that they will need to allocate sufficient resources to the case in good time.

Appealing a Decision or Order

Different deadlines for filing an appeal and grounds for said appeal apply depending on the nature of the decision or order being appealed. Generally, if a decision is a final decision of the Court of First Instance or a decision that terminates proceedings, the deadline is two months to file the appeal and four months to file the grounds. For other decisions and orders, the deadline is a much shorter 15 days to file the appeal and the grounds.

Care should be taken where a final decision, which has a two-month deadline to appeal, also includes orders or decisions that have a 15-day deadline to appeal. In one such case, the court issued a decision related to infringement proceedings alongside a decision relating to provisional measure proceedings, where requests in both proceedings were denied for the same reasons. However, the proceedings were separate from one another and the deadline for appeal differed. The Court of Appeal recognized that the Court of First Instance did not separate the decisions from one another and should have specified the different appeal deadlines. But, the Court of Appeal’s judgment also carried a warning that the UPC may not be so lenient in the future, even if the court states an incorrect appeal deadline.

Practicalities

Case Management System (CMS)

The CMS is a rigid piece of software that only permits documents to be filed in specific categories found in drop-down lists, and that allocates a proceeding number for each specific action within an overall action. For example, a claimant starts a revocation action with proceeding number XXX1. The defendant files its defense under the same proceeding number XXX1. However, if the defendant/patentee applies to amend, then that will be a separate action (proceeding number XXX2), and a counterclaim for infringement will again be a separate action (proceeding number XXX3). Want to file an application for a stay and a preliminary objection under Rule 19? Those must be done separately from the main action and separately from one another (proceeding numbers XXX4 and XXX5). Inevitably, this leads to a lot of separate proceeding numbers to keep track of, especially when curious third parties start to file access requests. So it is worth being aware that this will happen to ensure that internal records are set up to track each proceeding number associated with a particular action.

The CMS can be slow with documents, sometimes taking up to about half a minute to load, depending on the time of day. Applications and pleadings must be in PDF/A format, digitally signed by a representative, and uploaded one by one, which can take quite a while, especially if there is a long list of exhibits. This is one reason to be well prepared when handling an action so that the UPC representative doesn’t have to lodge a pleading in a mad dash and at the whim of upload speeds on the last day. Sometimes, the CMS is down altogether. If this happens, documents can always be lodged in hard copy at the Registry of the Court in Luxembourg or in any one of the subregistries at a division of the Court of First Instance14—again, not a position one wants to be in on the last day.

With all that said, the UPC is well aware of the problems that the CMS has presented. Judges and the Registry of the Court have to interact with it too and encounter many of the same problems, so there is internal motivation to improve it. Consequently, the number of issues on the CMS has been greatly reduced since the early days, and loading times have improved.

It is possible to set up a “My Legal Team” in the CMS to allow several representatives and other users to manage and lodge documents for a single action.15 This does, however, require a qualifying client authentication device, such as a smart card or USB stick, in order to create a CMS account.16

When actions occur on the CMS, such as the lodging of documents or issuance of an order, an email is sent to the address provided. If it is not feasible for every member of a team to have the means to create a CMS account, it is possible to provide a group email address so that the team is at least aware when an event occurs, even if they cannot view the case on the CMS. If an email address has already been provided, changing it is possible by filing a request under Rule 16.1(b) of the Rules Governing the Registry.17

However, all of this will be changing soon, as the UPC has announced a cooperation agreement with the EPO to develop a new filing system to replace the CMS. The UPC is aiming for the new system to be operational by mid-2025.

Guidance in Early Stages

Related to the rigid nature of the CMS and the fact that the entire procedure and set of rules are wholly new, there have been numerous instances where pleadings have been lodged under one rule but the court determines that they should have been lodged under a different rule. The court has thus far been lenient in admitting such pleadings and considering them on their merits rather than rejecting them outright,18 and has been responsive and helpful when asked for clarification on rules or handling technical problems. So in these early days, practitioners not sure which rule to rely on or in need of a little clarification on a particular issue can be confident that the court is there to help (they want it to all to work out too). But one should bear in mind that this is a civil law system rather than a common law system, and it may revert in time to the more rigid interpretation of rules that is generally associated with civil law systems.

Accessibility of Audio Recordings

Interim conferences and the final oral hearing are recorded, but should a representative wish to review what was said at the hearing or conference, they must apply via the CMS. The UPC will then contact the applicant about scheduling an appointment to visit the court, because an oddity of this process, in particular in relation to interim conferences, is that the recording must be heard in person at the physical premises of the court (but not necessarily at the division in which proceedings are taking place), this notwithstanding that the interim conference itself is held by video conference by default.

Perhaps this practice will change in the future. In the meantime, be sure to take excellent notes of interim conferences and oral hearings to avoid a trip to the nearest UPC division.

Expanding Jurisdiction

The territorial scope of the UPC is not fixed.19 Several UPC signatory states have not yet ratified the Agreement on a Unified Patent Court (UPCA) but intend to. Ireland, for example, apparently intends to ratify in the coming year.

Romania had not ratified when the court opened its doors last June but has now done so, and the UPC entered into force in Romania on September 1, 2024.20 This has had consequences for unitary patents. There are now “generations” of unitary patents, where first generation unitary patents do not cover Romania but second generation unitary patents do. Unitary patents registered after September 1, 2024, are second generation unitary patents. The EPO accepted requests for a delay of the registration of unitary effect to benefit from coverage in Romania.21 It is expected that the EPO will make similar provisions for future generations of unitary patents as other states ratify the UPCA.

The evolving scope of the UPC is something to keep in mind when advising clients.

Transparency

Decisions

Practitioners before the various patent offices and most courts are used to a high level of transparency, in that the documents are made available for public inspection by default. This is not the case at the UPC.

The court publishes orders and final decisions for actions, as well as a calendar of upcoming oral hearings and basic case information, on its website. For CMS users, it is possible to search for a case and find a list of documents that have been lodged for a particular action, but those documents cannot be viewed unless you are a party to that action.

To gain access, a third-party access request pursuant to Rule 262.1(b) can be filed in respect of pleadings and evidence. Such a request must include reasoning why the third party has an interest in viewing those pleadings and evidence. Anything that is not pleadings or evidence (e.g., acknowledgment or receipts for the lodging of documents) will not be made public.22

In an order dated April 10, 2024, the Court of Appeal set out general principles regarding third-party access requests.23 If the third party’s interest outweighs the general interests in justice and public order, then it will be granted. Further, there is a higher threshold to meet for access requests when actions are ongoing compared to when they have been concluded, with the reasoning that commentary on the proceedings by third parties could influence and compromise the integrity of those proceedings.

The timeline of third-party access requests includes a period set by the court of around 10 to 14 days for the parties to provide comments. If the request is then granted, the relevant documents will be made available to the requester. So, to look at another action for a guide to one’s  own proceedings, the timeline for actually gaining access to an action should be taken into account.

Decision-Making Process

Transparency of the decision-making process is not quite what might be seen in a common law jurisdiction in which the evidence is set out and assessed in light of the law in some detail so that a third party can understand fully how the decision was made. The UPC judgments thus far appear to be more in line with the civil law tradition of brevity. For example, the DexCom v. Abbott decision on the validity of EP 3 435 866 plus two auxiliary claim requests runs to 28 pages,24 whereas two decisions in the High Court of England and Wales on patents of the same family run to 137 and 93 pages,25 which gives some idea of the difference in the level of detail.

It is not clear from the UPC DexCom judgment whether either party sought to rely on expert evidence in relation to any of the points at issue, such as claim construction, common general knowledge, or obviousness, but if they did, then any expert evidence was not referred to in the judgment and so the technical points are decided in terms of what the “court considers” rather than weighing up rival expert opinions and making a decision accordingly.

Preliminary Injunctions

Litigants should bear in mind that the court will consider the validity of the patent in some depth when considering an application for a preliminary injunction. The court will look to determine whether, on the balance of probabilities, the patent is more likely than not to be infringed and more likely than not to be valid, and the court is likely to appoint technical judges to assist in this assessment. This is in stark contrast to the decision-making process in the UK, under which the merits of the infringement and validity cases are barely touched on at all, and the decision is made on commercial issues, the likelihood of irreparable damage to one or other of the parties, and the balance of convenience.

There has been some variation in decisions relating to security for damages, with one factor being that the UPC is required to order security in ex parte cases but not in inter parte cases, and, on the other side of the coin, quite some variation in penalty payments awarded for breach of a preliminary injunction, with orders ranging from €10,000 to €250,000 per infringement. No doubt this will be evened out by appeal decisions over time.

The jury is still out on the usefulness of protective letters. An ex parte preliminary injunction was granted in myStromer v. Revolt even though the defendant had filed a protective letter, because the court considered that the defendant had been heard by way of its protective letter.26 On the other hand, in Ortovox v. Mammut, the court decided that the defendant had set out its substantive arguments in its response to a warning letter in any event and granted a preliminary injunction.27

Bifurcation

The UPC rules allow for bifurcation of infringement and validity actions, as has always been common in Germany. Thus far, the option to bifurcate has not been taken. The reasoning the court has tended to adopt when deciding this matter is that bifurcation would lead to procedural inefficiency and that keeping the infringement and validity actions together allows uniform interpretation of the patent by one panel of judges.28 So it appears that bifurcation will only occur in limited circumstances and will be the exception rather than the norm.

Having said that, the Paris court in DexCom did not decide infringement even though it was in issue, saying that the patent was found to be invalid and so “the infringement action brought by DEXCOM has no legal basis and all related requests must be dismissed.”29 This seems a bit unsatisfactory to an English litigator accustomed to all issues being decided, effectively amounting to a de facto bifurcation, and begs the question of what will happen if the validity decision is overturned by the Court of Appeal.

Claim Construction and Patentability

Unlike the EPO, the UPC’s Court of Appeal has established a straightforward and pragmatic approach to claim construction in NanoString v. 10x Genomics.30 Those fundamental principles are set out as follows:

1. The patent claim is not only the starting point but the decisive basis for determining the scope of protection of a European patent under European Patent Convention (EPC) Article 69 in conjunction with the Protocol on the Interpretation of Article 69 EPC.
2. The interpretation of a patent claim does not depend only on its exact wording in the linguistic sense. Rather, the description and drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to eliminate any ambiguities in the patent claim.
3. The patent claim does not merely serve as a guideline, but its subject matter also extends to what, after examining the description and drawings, appears to be the patent holder’s request for protection.
4. The patent claim must be interpreted from the point of view of a person skilled in the art.

In one case relating to a preliminary injunction, the Court of First Instance relied in part on the prosecution history for the patent at issue in order to interpret a particular feature. On appeal, the Court of Appeal avoided the use of prosecution history in claim construction, instead referring back to the NanoString v. 10x Genomics order and leaving the question as to whether prosecution history could be used in claim construction open.31

In the first final decisions from the UPC relating to infringement actions, the court has not applied the EPO’s problem-solution approach when considering inventive step. Instead, the court appears to be developing its own approach. However, in at least one decision,32 the court has asserted that the problem-solution approach would not lead to a different result. Whether this continues to be the case in practice remains to be seen.

Building Confidence

One year in, the UPC appears to be going strong, building case law and confidence. While the procedure will take some getting used to from a common law practitioner’s perspective, it seems to be developing along the front-loaded and court-led lines that are likely familiar to U.S. patent practitioners who have experience working with the EPO.

These tips and highlights are meant to help demystify the court. UPC representatives may be contacted for further clarification, but some answers may still be evolving.

Conor Wilman is an associate at Dehns, London, UK, where he focuses on patent prosecution and litigation at the European Patent Office (EPO) and Unified Patent Court (UPC). He can be reached at cwilman@dehns.com. Tom Carver is a partner at McCarthy Denning in London, UK, where he focuses on intellectual property litigation. He can be reached at tcarver@mccarthydenning.com.