First few months of the Unified Patent Court: a review

The first four months of operation of the Unified Patent Court (UPC) was a success.

After so many years in the making and the resulting political compromises made to get the project over the line, there was some scepticism as to the extent to which stakeholders would avail themselves of the court and the new European patent with unitary effect (the Unitary Patent).

Contrary to expectations, stakeholder participation has been high, and the court has made an emphatic start, with 43 orders being made already over a diverse and interesting range of applications and issues.

The content of orders has also been user friendly and “educational” in their flavour, such as by walking defendants through next steps in proceedings or by illustrating how the court is applying a particular rule.

While the high quality and speed of the court has been apparent, the court's case-management system less so, which is suffering from teething problems.

Preliminary injunctions

We now have a good idea of the court's approach to preliminary injunction (PI) applications, both ex parte and inter partes.

The first ex parte PI was granted in the UPC’s first few weeks, by the Dusseldorf local division in a case between Swiss entities myStromer v Revolt Zycling, involving “bicycle frame and motor hub” innovation.

The ex parte was granted on the same day the application was received, giving an indication of the UPC’s swiftness in dealing with interim relief.

Inter partes applications for PIs were heard in September before the Munich local division in disputes running between 10x Genomics and NanoString—the first PI was granted on September 19.

In both sets of PI cases, the UPC gave helpful guidance on what constitutes “reasonable evidence” that would satisfy the court that there is a sufficient degree of certainty that (inter alia) the patent is valid in order for a PI to be granted (UPC Rules of Procedure 211.2).

In myStromer, the Dusseldorf court took comfort from the fact that the patent was not opposed during the application process or post-grant, and no national revocation actions had been brought.

Further, the respondent did not produce any relevant prior art in its protective letter—all factors which the court considered supported the validity of the patent.

In the first 10x Genomics case, the Munich court indicated a “preponderance of probability” that the patent is valid and necessary (but also sufficient), meaning it must be more probable that the patent is valid than not.

In that case, while the patent had only recently been granted and was being challenged in ongoing opposition proceedings, that did not prevent the court from granting a PI. This shows that the UPC will not reserve PIs only for patents that have survived the crucible of opposition proceedings.

Time-critical filings

The UPC has also dealt with procedural issues. In the UPC’s first-ever case, involving Sanofi-Aventis and Amgen, the court had to determine which party filed UPC proceedings first and therefore which division was first seized.

Amgen had filed an infringement action in the Munich local division on the same day as Sanofi-Aventis filed a revocation action regarding the same patent at the Luxembourg UPC Registry.

As the electronic CMS system was down at the time, the court relied on the timing of the physical filing of the hard copies to decide the order. On that basis, Sanofi-Aventis pipped Amgen by 19 minutes, leading to the revocation and infringement actions being bifurcated.

Harsh lessons have also been dealt out in relation to the drafting of relief. In the myStromer ex parte PI case, the applicant neglected to explicitly identify Austria as one of the countries it intended for the PI to apply to.

The applicant attempted to amend the PI order under RoP 353 on the basis that this was a “clerical error” or an “obvious slip”. The court refused the amendment on the basis that they had understood that Austria was not covered, so there could be no obvious slip.

First decision

Conversely, the UPC has appeared to be more generous with respect to extensions of time for filing of pleadings. This is perhaps a recognition of the still unfamiliar nature of the new court systems and issues with its case-management system.

For example, the Court of Appeal’s first-ever decision clarified that the three-month deadline for a defendant to file a statement of defence begins from the date the plaintiff has served the claim and all its attachments, rather than just the claim, as the Munich local division had originally held.

This effectively granted the defendants a one-month extension, while also beginning to harmonise aspects of the UPC's rules of procedure.

Opt-out clarification

An interesting decision clarifying an aspect of the opt-out regime was also handed down by the Helsinki local division. The court held that the opt-out of an EP bundle cannot be withdrawn if one patent designation in that bundle has already been litigated in a national court, even if the action was initiated before the UPC started hearing cases.

Third-party access to pleadings is currently only allowed only if they can provide a “concrete, and verifiable, legitimate” reason. Applications for access citing “personal and professional interest” and “purposes of education and training” were deemed insufficient.

However, leave to appeal has been granted, with the judge rapporteur noting that a clear and consistent interpretation of a “reasoned request” pursuant to Rule 262.1(b) RoP is required.

Quality of judges

Reports on the quality of UPC judges have been favourable and the consensus is that they have been well prepared and proactive during hearings. Interestingly, judges have declared their initial opinions during the opening of hearings (eg. in the 10x Genomics PI case, the panel declared that they considered the patent infringed and likely valid).

Unitary Patents have proven to be more popular than anticipated. As at October 5, 2023, 10,251 were registered with unitary effect, with a further 642 applications pending.

As we move forward, it will be interesting to observe whether the local division courts develop distinct approaches or align more closely, potentially under the guidance of the Court of Appeal.

There is much to learn from these initial months, and the UPC represents a significant step toward harmonising patent law and protecting innovation across Europe. Its progress so far is certainly encouraging.

Sebastian Moore is a partner and head of intellectual property at Herbert Smith Freehills. He can be contacted at: Sebastian.Moore@hsf.com

John Lao is an associate at Herbert Smith Freehills (Australia) at Herbert Smith Freehills. He can be contacted at: john.lao@hsf.com