A First Quarterly Report for the UPC – A Promising Start
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A First Quarterly Report for the UPC – A Promising Start

Following opening of its doors on 1 June 2023, there has been a fair amount of activity at the Unified Patent Court and trends thus far suggest it may become a popular venue for bringing a suit in Europe.

As of today, we understand from information provided by the UPC that it has around 52 pending cases, with some additional early cases having already been settled. While there was an initial flurry of cases soon after opening of the Court’s doors, there has also been a steady stream of new cases. Additionally, with an increasing number of Unitary Patents (which cannot be opted out of the jurisdiction of the UPC) being registered, more and more patents will begin to fall under the jurisdiction of the UPC.

The UPC has also expanded its resources to assist with handling of more cases. Since opening of the UPC, we understand that a further 21 judges have been sworn in, giving a total of 105 legally and technically qualified judges. These new judges include four ex-EPO Board of Appeal members, who add a further EPO perspective to the UPC, alongside the many European patent attorneys acting as technically qualified judges.

A review of the early activity at the UPC and the types of actions being filed illustrates a few patterns:

  • The UPC has been adopted as a new battleground in various existing disputes. Thus, competing revocation and infringement actions were filed respectively by Sanofi and Amgen on the first day of the UPC, expanding on previous litigation in the US and Germany and an Opposition at the EPO relating to anti-PCSK9 antibodies. Other global patent disputes that have also branched out into the UPC include the Edwards Life Sciences/Meril, 10X/Nanostring and Ocado/Autostore litigations (the latter of which has now settled).
  • By far the greatest number of cases (at least 36 of those published to date on the UPC’s website) are infringement actions, including 12 infringement actions brought by Panasonic against various subsidiaries of Oppo and Xiaomi. The focus on infringement actions compared to revocation actions (of which only 7 are pending) may reflect to some extent the fact that many patents were opted out of the UPC’s jurisdiction prior to its opening, and thus cannot be targeted with revocation actions. Also, an EPO Opposition provides a cost-effective alternative compared to a revocation action at the UPC, provided that the nine month Opposition period has not expired. However, the attractiveness of the UPC for enforcement in all UPC participating states in a single action, including against cross-border activities, likely also contributes to the popularity of infringement actions. A large range of provisional and protective measures are also available at the UPC (see below), making it an effective forum for pursuing infringers.
  • The availability of protective and provisional measures to patentees at the UPC has already been established in various cases, with several court orders already having been issued granting such measures. These include an ex parte application for preserving evidence (granted by the Milan local division) and ex parte and inter partes applications for preliminary injunctions. The ex parte preliminary injunction was granted by the Düsseldorf local division notwithstanding the existence of a protective letter, deemed not to provide sufficient arguments/evidence (and thus providing some guidance as to the level of detail that may be needed for protective letters to be effective at the UPC). An inter partes preliminary injunction was also recently granted by the Munich local division in one of the 10x/Nanostring cases. In contrast, another inter partes application for a preliminary injunction was denied by the Vienna local division based on the infringement argument not being sufficiently persuasive. The court orders issued to date show that the UPC is prepared to grant provisional and protective measures in the right circumstances. It will be of interest to see how the practice of the UPC develops in this area and if there are any variations in practice between local divisions which may increase forum shopping.

In summary, the early activity at the UPC and uptake by users illustrate the importance of factoring in the UPC into patent strategy in Europe. Indeed, our firm is already defending two revocation actions brought before the UPC, alongside a parallel Opposition at the EPO. The decision on whether or not to opt out EP patents from the UPC’s jurisdiction involves many factors, which will need to be assessed on a case-by-case basis. Likewise, various strategic issues need to be reviewed when considering enforcing or challenging an EP patent at the UPC. If you have any queries relating to patent strategy with respect to the UPC, please feel free to contact your usual J A Kemp advisor.