4 months of the Unified Patent Court (UPC) - "Business as usual" or "Everything different"?

After years of waiting and the expiry of the "sunrise period", the UPC started operating on June 1, 2023. Time perhaps to take a look at the previous system in daylight.

First of all, the UPC has not yet fundamentally turned the system of patent disputes or invalidations of patents in Europe on its head. Despite the constant "latest news" from the circles involved, there have been few major upsets. This is certainly to be welcomed and is certainly also and especially due to the care and prudence of the judges involved, in particular Klaus Grabinski, the president of the court.

The third central location of the UPC has also been clarified: in addition to Paris and Munich, there will probably be a chamber in Milan from 2024, which will share the pharmaceutical and life sciences cases with Munich, among others.

As in the Dutch and Swiss court proceedings, the UPC also has technical judges, some of whom are recruited from the legal profession, companies or patent offices or courts. The 50 or so technical judges complement the 35 or so legally qualified judges in the system. Following a lively discussion about possible conflicts among the technical judges, some of them resigned from their posts in advance, while the professional code was amended again in May 2023. There are sure to be further upsets in the future.

Even after only a short period of operation, it can be said that the UP system is strongly influenced by Germany. Over 40% of registered representatives come from Germany, and to date around 75% of pending cases have a connection to Germany, be it as a place of jurisdiction, representative and/or party. In view of the traditionally high number of German disputes, the market and the exit of the British, as well as the change in the allocation of patent classes, this is not really surprising, but the clear dominance is remarkable.

As far as can be seen from the UPC's somewhat unwieldy database, 38 infringement proceedings, 16 nullity actions, 4 interim injunctions and 1 preservation of evidence procedure are pending (as at the beginning of October 2023). Contrary to expectations, the technical fields of the lawsuits are not limited to certain areas; there is also a fairly large number of cases from the pharmaceutical and life sciences sectors. No case of a "patent troll" has yet become known, there is one SEP action (Panasonic) and one settlement (Ocado vs. AutoStore).

No "established case law" can be derived from the cases dealt with or decided so far. Not unexpectedly, there are notable decisions in the area of formalities, not unexpectedly after the bumpy start and course of the "case management system" (CMS), which plays a central role in the system.

Initially, several cases concerned the jurisdiction of the chambers, with the first IPC class being decisive. The court also had to clarify what the effects of a possible "provisional" and incomplete submission in paper form were on the timing of cases and the jurisdiction of the courts if the CMS did not function (ORD_560432/2023). The admissibility of such an action was also addressed.

Also important is the assessment of the legal interest in requesting access to the files (denied, ORD_550152/2023, ORD_552745/2023). An extension of the deadline was also rejected, which suggests that the proceedings were expeditious (ORD_560542/2023).

In addition, several preliminary injunctions were negotiated, some of which were issued (ACT_459746/2023, Munich) and some of which were rejected (in Vienna, September 14, 2023). In the Vienna case, it was also established that once proceedings have begun before the UPC, as well as an interim injunction, there is no "escape" by attempting to opt out.

Only very few cases were heard in the main proceedings. Of these, "the" case in Helsinki should be mentioned, in which the patent proprietor AIM Sport Vision, otherwise accustomed to national European winning, lost before the UPC chamber. The court was of the opinion that the earlier national enforcement of a patent, even before the start of the UPC, blocked the subsequent revocation of an opt-out (ORD_551054/2023 and 545571/2023). The case was dismissed.

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But what can be deduced from the above procedures for practical use? At least the following:

• The UP system has so far been strongly influenced by Germany, which makes Germany even more attractive as a venue;  
• The procedure is designed to be faster than the national procedure;
• Careful timing between the national patent, European bundle and unitary patent is very important, and not only in the case of immediate enforcement;
• Anyone who has not yet enforced their IP has obviously been strategically well advised to opt out and exercise slight restraint.
  Do you have any questions about the article or the UPC? Please do not hesitate to contact us.

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