The UPC and unitary patents – six weeks in

Six weeks into the new Unified Patent Court and unitary patent, both elements of the new system seem to have taken off, with unitary patents proving popular and the first cases being filed (17 infringement and 3 revocation actions to date). In addition the location of the third central division seat has now been formally resolved by amendment of the UPC Agreement, along with confirmation of the IPC classifications of the patents to be handled by each seat. The use of English as a language of proceedings has now also been confirmed across all UPC local division courts. Whilst opt-outs are high and teething problems remain with the case search systems and some practical procedural issues, a certain UPC momentum is developing, with the first preliminary injunctions and orders also being granted.

Unitary patents (UPs): The selection of unitary effect for European patents coming to normally grant from the day the UPC came into being (on 1 June 2023) or having grant delayed in order to allow the choice of unitary effect via the EPO's transitional mechanisms, appears to have been popular. This shows a confidence in the new system from many as UPs can only be enforced via the UPC, whereas conventional EPs designated to individual states could be enforced in either the UPC or a national court, or opted-out of the UPC's jurisdiction altogether.  The EPO press release of 12 June reported that:

"In total, the EPO had received 800 requests for unitary effect by the end of May, as well as 4 500 requests for deferred publication of the grant of the European patent which will make those patents eligible for requesting unitary effect in June and early July".

Opt-outs:  Nevertheless the number of patents opted out of the UPC's jurisdiction has been much higher than originally predicted. It seems that around 465,000 European patents were opted out during the three month “sunrise period” prior to the commencement of the UPC with the numbers accelerating towards the end of this period. Patents and patent applications can continue to be opted out at any point, not just during the sunrise period before the UPC started, so these numbers have continued to rise with over 500,000 opted out according to recent accounts.  For more on opt-out see the Jurisdiction and opt-out section of our UPC hub here.

UPC case filings: The UPC Administrative Committee announced on 26 June (published on 29 June) that

"So far the Court has 23 cases, consisting of 6 protective measures (more specifically, 4 applications for provisional measures; 2 applications to preserve evidence), 3 Revocation actions and 14 Infringement actions. The Court also received 236 protective letters. It should be noted that due to the dynamic character of the Court’s caseload figures are likely to be rapidly outdated."

In terms of sector use of the new court system, there appear to be both pharma and tech matters on foot. There have been filings in several German local divisions as well as the Milan local division. Of the three revocation actions filed, two were filed in the Paris central division and one in the Munich central division, although the former appear now to have been transferred to Munich also. It is understood that some preliminary injunctions and procedural orders have also been granted in the last few weeks.

However as Laura Orlando, the joint global IP of our IP practice, who is based in Milan, commented in an interview with Managing Intellectual Property published last week (6 July 2023): “In terms of case law and illumination of the procedural process, there is little to go on so far" due to the paucity of information available on the UPC caselaw search and CMS and apparent delays in uploading case information.  She also noted that the number of protective letters being filed (more than 200 according to the UPC Administrative Committee's comments above) indicates that IP owners are concerned that they may be sued in the new court.  Laura commented that although there are some signs of a busy start, there is a lot of uncertainty about procedural formalities such as the way court filing works, but that the UPC court clerks are “extremely collaborative” and keen to work with practitioners to build a new practice together. For example, initial problems faced by those filing protection letters being unable to file a single letter on behalf of more than one prospective defendant have been resolved.

Accessibility of case materials in the UPC: Whilst decisions and of the court are to be published on the court site (under Rule 262.1(a) of the UPC Rules of Procedure – with redaction of personal data and confidential information) the UPC Rules of Procedure state at Rule 262.1(b) that pleadings and evidence will only be made available to the public on reasoned request to the Registrar (with a decision made by the judge-rapporteur after consultation with the parties). What such a reasoned request should look like or what factors will be taken into account is not specified in the Rules. The existence of the pleadings (but not their contents) should be listed on court files. If pleadings or evidence are to be made public (following an accepted reasoned request) there will be a 14 day period during which parties can request redactions and provide redacted documents to be used for this purpose.  There are also provisions for what is to be kept confidential if such a request is acceded to. In relation to orders and decisions the Court will decide of its own motion what should be redacted, taking into account requests for confidentiality.  See our blog post commenting on these aspects, published when the UPC Rules of Procedure were finalised in August 2023.

UPC court structure and patent classification responsibilities: In the first few weeks of the new court system, we had some definitive developments on the central division seats of the UPC. The UPC Administrative Committee published the decision to amend the UPC Agreement (UPCA) so that references to the UK are removed and Milan is confirmed as the third seat of the central division, replacing London. The Milan seat is obviously not able to open immediately, although it is expected that it will be ready by June 2024 (Article 87.3 allows 12 months for this from the date of the amendment of the UPCA). So, for now, patent classifications that would have been dealt with by the London seat of the central division ((A) and (C)) are being split between Paris and Munich respectively, with Milan taking on class (A) patents once it central division court has been fully established.

Once the Milan central division is operational, the final split of responsibility between the seats of the central division will be as follows:

• Paris: SPC related matters for patents classified IPC (A) or (C), and IPC (B)(D)©(G)(H) classified patents;
• Munich: IPC (C) classified patents (Chemistry, Metallurgy) without SPCs as well IPC (F) patents (class F concerns mechanical engineering, lighting, heating, weapons and blasting); and
• Milan: Patents classified under IPC (A): Human Necessities (without SPCs)

Judges: As expected, a few technical judges have resigned following the confirmation of the judicial code of conduct which makes part time practice as a patent attorney quite difficult to manage with the restrictions imposed by the code. However more applications and appointments are expected, indeed one of the resigning technical judges has become a legal judge instead.

Languages: The UPC Rules required that each local/regional division use one of English, French, German; or one of official languages of host state for proceedings.  However, the language of the patent can be used if the parties agree and the panel approves (and if no approval, parties may request transfer to the central division) or if decided by the President of the Court of First Instance if one party requested but the other(s) did not agree (the President having considered the circumstances and the parties’ positions – particularly the defendant’s position).

All local divisions have now accepted English as a language option, but if English is chosen for proceedings in a local division in Belgium, France, Italy or Germany, the judge-rapporteur may, in the interest of the panel, order that an official language may be used in oral proceedings and/or decisions and orders (with a certified translation into English). See our UPC hub page here and the UPC website's page on Language of Proceedings for more on this.

The central division will use the language in which patent granted (mostly English) and any appeal to the UPC Court of Appeal in Luxembourg will be held in the language of the first instance proceedings.

For more information on the UPC and strategies and opportunities within this new patent jurisdiction, see our UPC and UP Hub.

Authors

How we can help  Our fully integrated, market leading team, is on the ground in France, Germany, Italy and the UK and has decades of experience in running multi-jurisdictional patent litigation in respect of our clients' most valuable products, including experience in the jurisdictions which will inform the UPC's procedure in due course.

We are able to use legal, technical and strategic skills from across our whole European team to give you the best advice on your UPC or national matters, with the qualifications necessary to handle cases whether they are in the UPC or key national courts.

The new UPC court system has jurisdiction over EPs in all UPC participating EU member states (currently 17), but litigation will also need to continue in non-participating EPC states (including the UK and in the seven EU member states that have not yet ratified the UPC Agreement (three of which have declared an intention not to join at all) and in national courts of participating states in relation to EPs opted out of the UPC's jurisdiction.

So, as well as litigation in the UPC, the execution and management of multi-jurisdictional patent litigation, in which our team has unrivalled experience, will still be a key element of patent enforcement in Europe.

For more information and advice on the new system, please contact Laura Orlando, or any of the other key contacts listed below.

Key contacts

[show_profile name="Jonathan" surname="Turnbull" jobtitle="Partner, London" phone="+44 20 7466 2174]