One Year into the UPC

The Unified Patent Court (UPC) began its operations on June 1, 2023, and over the past year, the UPC has seen over 134 infringement actions, 39 revocation (invalidity) actions, and 26 requests for provisional measures (preliminary injunctions). Most of these cases have been concentrated in the German local divisions. The UPC distinguishes itself from traditional European and U.S. patent systems through its extensive geographical reach, short procedural timelines, and a higher propensity for issuing preliminary injunctions.

We outline key decisions and considerations for those considering obtaining Unitary Patents. 

Geographical Reach

The UPC serves as a central court system with jurisdiction over both traditional European patents (EPs) not opted out of the UPC and Unitary Patents (UPs) issued by the European Patent Office (EPO) with unitary effect. Currently, the UPC includes 17 member states, with Romania joining as the 18th member in September. This means a decision from a UPC patent dispute applies to major EU economies allowing patent owners to enforce their patents across these states with a single action. 

The UPC reach provides economic efficiencies for patent applicants, allowing them to secure protection across multiple UPC member states with a single request filed with the EPO, avoiding the costly and time-consuming process of validating a European patent in each state. This streamlines the administrative process and offers a more cost-effective solution for patent protection in the EU. See EPO Unitary Patent Guide, the benefits of the Unitary Patent.

Enforcement at the UPC

Traditionally, a European patent under dispute may require litigation in all validated countries, which is expensive and can lead to inconsistent results and legal uncertainty. In contrast, patents under the UPC’s jurisdiction allow patent owners to litigate in one of the UPC’s divisions and obtain a decision applicable in all member states.

Additionally, patent challengers can bring revocation actions before the UPC, independent of EPO opposition proceedings, with successful revocations effective across all UPC member states.

Timeline

Unlike U.S. patent litigation, which can take several years, UPC cases require evidence identification in the complaint, with limited opportunities for additional evidence post-complaint. This front-loaded process enables the UPC to render decisions within a year. Defendants must provide a defense or counterclaim within two to three months, with deadlines generally non-extendable, placing substantial pressure on them.

To address the limited opportunity for obtaining additional evidence post-complaint, the UPC authorizes orders to preserve evidence and inspect premises, potentially on an ex parte basis. If the relevant evidence is located in the US, one additional means of collecting evidence may be an action pursuant to 28 U.S.C. §1782 (see International Bar Association, how to obtain section 1782 discovery). Additionally, defendants can request limited additional evidence from plaintiffs or third parties to substantiate their claims.

Preliminary Injunctions

The UPC is more inclined than U.S. courts to grant preliminary injunctions, with less stringent requirements for demonstrating irreparable harm. Applicants need to show a likelihood of patent validity and infringement and timely relief requests. The UPC’s first year indicates a high likelihood of issuing preliminary injunctions where validity and infringement are demonstrated by a preponderance of the evidence, even for non-practicing entities showing economic harm to its licensing program. see 10x Genomics, Inc. v. NanoString Techs. Inc.. Moreover, the UPC has shown readiness to grant injunctions on an ex parte basis in urgent situations, as seen in the myStromer AG v. Revolt Zycling AG decision.

Protective Letters 

Entities anticipating a request for provisional measures can file a protective letter, challenging the applicant’s expected assertions. While this does not eliminate the risk of preliminary injunctions, it may reduce the likelihood of ex parte issuance. However, the effectiveness of a protective letter depends on the strength of the arguments presented. Weak arguments, as seen in the myStromer case, may lead to the issuance of an ex parte injunction.

Language

English is the preferred language of proceedings, making up around 50% of all proceedings. In 10x Genomics v. Curio Biosciencethe UPC Court of Appeal clarified the circumstances relevant to switching to the language of the patent; the vast majority of European patents are in English. This may motivate parties to file UPC actions in the language of the patent.

Access to Pleadings

Third party access to pleadings varies among European national courts, however, in Ocado v AutoStore,  the UPC Court of Appeal’s decision provided guidance as to the availability of written evidence and pleadings to the public upon “reasoned request”. The decision clarified that the chances of accessing documents during the course of proceedings are generally slim except when a member of the public has a specific interest instead of a general interest. The chances are increased after the proceedings have come to an end. One example of request to access to the pleadings  is for the third party's intended use of the pleading documents in the parallel proceedings such as EPO oppositions. 

Security for costs

The UPC may grant security for costs where the financial position of one party may give rise to a legitimate and real concern that the costs may not be recoverable. This is more applicable if one party is located outside of the UPC’s jurisdiction, for example UK or US. In NanoString v Harvard, the Court ordered NanoString to provide security for legal costs and other expenses of EUR 300,000, because NanoString was UK-based and that was considered to create an additional burden and uncertainty on the party seeking to enforce the judgment in the UK. 

Considerations

The UPC offers streamlined, cost-effective patent protection and enforcement across multiple EU states, with expedited timelines and a higher likelihood of preliminary injunctions. However, it also presents risks for patent owners. Patents within UPC jurisdiction are subject to single revocation actions, whereas those outside would need separate national challenges. Patent owners can opt out during the UPC’s seven-year transitional period, ending in June 2030. Initially, many patents were opted out, but confidence in the UPC has grown, with fewer opt-outs and some withdrawals of prior opt-outs. Opt-out strategies carry risks, such as precluding re-entry into UPC jurisdiction. Patent owners should ensure alignment among all owners on opt-out decisions to avoid rendering them ineffective.

The opinions and recommendations expressed are those of the author and do not reflect the views of Leo Patent Law Office or its clients. This document is for general information purposes only and is not intended to be and should not be taken as legal advice.