In its first four months of operation, the Unified Patent Court (UPC) has accepted over 250 actions and made over 45 orders. These cases span a variety of sectors, including life sciences, consumer goods, and mechanical engineering, and involve parties from the US, India, UK, Switzerland, and UPC participating EU states.
The first two inter partes preliminary injunction decisions of the UPC involved two US biotech giants, 10X Genomics and Nanostring.
In the first application (2/2023, decision date 19 September 2023) an injunction was granted in 10x Genomics’ favour across all 17 EU states participating in the UPC – so across its full jurisdiction. The Rules of Procedure (RoP) require the court to have “a sufficient degree of certainty” as to (inter alia) the validity of the patent, before granting a PI. In its decision, the Munich local division court of the UPC gives useful guidance on how to interpret this requirement: a “preponderance of probability” is necessary (but also sufficient), meaning it must be more probable that the patent is valid than that it is not valid. In this case, the patent had recently granted and was the subject of ongoing opposition proceedings, but that did not prevent the court from awarding a PI – demonstrating that the UPC will not reserve PIs only for patents that have been tested by opposition and survived. The decision also confirms that PIs are available to “non-practicing entities”; financial damage alone can justify an injunction and a company’s status as an NPE in itself has no significance.
10x Genomics’ second application for a PI, also against NanoString (17/2023 – decision date 10 October 2023) in relation to another related patent was unsuccessful. A decision has yet to be published on the UPC website at the time of writing.
In summary, so far, the new UPC courts of first instance have
- granted both ex parte and inter partes preliminary injunctions: Notably, the first ex parte preliminary injunction was granted by the Dusseldorf local division court, in a case between two Swiss entities, myStromer and Revolt Zycling, involving a “bicycle frame and motor hub” innovation. The first inter partes preliminary injunction was granted in a dispute between 10x Genomics and NanoString, with the injunction applying across all 17 EU states under UPC jurisdiction. However the Munich local division subsequently refused 10x Genomics second application for a PI against the same parties in relation to a related patent (see above).
- issued seizure orders, detailing how these should be carried out:. In the case of Oerlikon Textile GmbH v Bhagat Group, the Milan local division court provided guidance on the evidence needed for an ex parte seizure order to be granted and the practical measures that need to be taken.
- dealt with a variety of procedural issues: In the case involving Sanofi-Aventis and Amgen, respectively bringing a revocation action and infringement action against each other, the Munich central division court had to determine which party filed first, as the UPC rules on where the action needs to be heard differ depending on whether a revocation action is brought when an infringement action has already been lodged, or vice versa. The court used the agreed timings of the physical filing of the hard copies (filed while the CMS system was down on the first day of the court, 1 June 2023), rather than any timings appearing subsequently on the CMS, to decide that the revocation action was filed first. The result has effectively lead to a bifurcation situation in this case.
- provided guidance on the structure of an oral hearing for preliminary measures and preliminary objections: This included limitations on time for which each party could present their case, details about the use of visual aids and recordings, as well as online participation.
- considered the impact of protective letters on injunction applications and the further evidence required by the court
- considered and granted extensions of time in some cases, but not in others
- granted security for costs awards in some cases but not in others
- granted interim costs awards
The impact of national actions on opt-out: In a significant move, AIM Sport v Supponor, the Helskini local division court held that the opt-out of an EP bundle cannot be withdrawn where one patent designation in that bundle has already been litigated in a national court. This decision was made even though the action had been brought before the UPC commenced hearing cases.
Where to file revocation actions: The Paris central division court has transferred a pair of actions for revocation, brought by Astellas, to the Munich central division court, as in both cases the first IPC classification of the patent was (C), although there were also (A) classifications in the IPC list.
Access to pleadings: So far, third parties have not been granted access to pleadings. Two applications for access to pleadings were rejected on the basis that a “concrete, and verifiable, legitimate” reason was needed and the suggested reasons which included “personal and professional interest” and “the purposes of education and training” were held not to fulfil that standard. Leave to appeal has been granted however,
Judges: Since the start of the UPC on 1 June, more judges have been appointed in the technically qualified judge (TQJ) category. One technical judge even swapped his role to become a legally qualified judge (LQJ) in the Munich central division and has also heard cases in the Munich local division as “the judge from the pool” alongside the two permanently appointed local judges. A Court of Appeal judge has also played this role on a local division panel.
Unitary patents: UPs have proven popular, with 10,251 patents registered with unitary effect as at 5 October 2023. The initial rush for unitary effect patent status was expected as the EPO had introduced mechanisms to assist those wishing to have unitary status granted for their patents to delay grant in order to achieve this. This has dropped off significantly however.
In conclusion: The UPC has made a good start, with reports of the judges being proactive and well prepared. It has already issued preliminary injunctions (granting security for costs as well as costs awards and refusing to amend the form of an injunction when the applicant pleaded obvious error) and provided guidance on the practical interpretation of its rules including what is an is not “urgent” or considered a delay relevant to the grant of a PI. The new court has had to deal with some of the more controversial issues, such as access to pleadings and the impact on opt-out of a previous national actions, but has also been user friendly in issuing orders that take defendants through the next steps or illustrate how the court is applying a particular rule. It is still early days but already a national flavour appears to be developing in the local division courts, and it remains to be seen if their approaches will diverge further in time or be reigned in by the court of appeal. There is certainly much to assimilate from these first four months, as well as plenty more issues for the court to tackle going forward.
For more on the UPC and unitary patent in general – see our UPC & UP hub.
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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, is still be a key element of patent enforcement in Europe.
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