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The Unitary Patent and UPC: key themes from the first year

Posted on 20 June 2024

After some 40+ years in the planning, the Unified Patent Court (UPC) has recently celebrated its first birthday. With the Court due to issue shortly its first infringement and validity decisions (with the first substantive judgment expected in early July), it has already been busy with a number of interesting developments, as parties and their advisers navigate their way through the intricacies of the new system.

In this article, we review the key decisions and updates over the last 12 months and also look ahead to future developments, including some potential areas of contention.

How popular has the UPC/Unitary Patent been so far?

The central question about the UPC/Unitary Patent regime in its run up to going live was simply would businesses use it to obtain and enforce patents in Europe? Whilst significant numbers of standard European Patents were, in fact, opted out of the UPC's jurisdiction in the sunrise period before 1 June 2023, figures published by the UPC confirm that, in its first year of operation, it has so far proven to be a popular forum in terms of the levels of activity. Businesses (of varying sizes and based in various jurisdictions) from sectors ranging from pharmaceuticals to 'tech' and consumer goods have put their faith in the Court's procedures and judiciary.

In its first year, the UPC has received 373 cases. Of these, there have been:

  • 134 infringement actions (with 165 counterclaims for revocation filed in 63 of those infringement actions).
  • 32 applications for provisional measures, preserving evidence and orders for inspection.
  • 39 revocation actions filed at the Central Division (though note that only one declaration for non-infringement has been filed). 

As widely anticipated, the majority of infringement actions have been brought in Germany, with the Munich Local Division way out in front, followed by Düsseldorf, and then Mannheim. At the other end of the scale, some Local Divisions are yet to receive any actions, or have only received one or two. Due to the popularity of the Munich Local Division, two new legal qualified judges have joined the Court to assist with its increasing workload, and there is also a new judge in Mannheim. The working time of certain part-time judges will also be increased in the coming months to deal with the demand.

With Germany the preferred location for infringement actions, it is interesting to note that English is now the predominant language of proceedings, with 50% of cases being litigated in English (German makes up 44% of the language of proceedings). As we explain below, the use of English is likely to become more established as a result of the Court of Appeal's guidance on requests to change the language of the proceedings.

The Unitary Patent system has also had a reasonably promising start, with almost one in four granted European patents being converted to a Unitary Patent in the first year (there have been more than 28,000 requests for unitary effect filed, leading to 27,500 registered Unitary Patents). The Unitary Patent dashboard shows that unitary protection is particularly popular in the medical technology sector, with other sectors such as civil engineering, measurement, transport and digital communication bringing up the next top spots. Companies with significant Unitary Patent programmes include Johnson & Johnson, Siemens, Samsung and Qualcomm but there has also been an encouraging uptake from SMEs.

New joiners to the regime

The UPC has never been an EU-wide project as a few EU Member States (Spain, Poland, Croatia) decided not to participate at all. When the UPC opened its doors for business on 1 June 2023, it was made up of 17 of the 27 Member States of the EU, with others expected to follow as the system bedded in. Alongside the statistics highlighted above, confidence in and engagement with the new regime by the remaining eligible Member States will be a key indicator of the success of the system.

In the intervening year, however, only one further Member State has taken the next step of joining the regime. Romania has become the 18th Member State to ratify the UPC Agreement, which will enter into force in Romania on 1 September 2024. Ireland meanwhile had been due to hold a referendum on ratifying the UPC Agreement (as required by its constitution) alongside local and Euro elections in June 2024 but the Irish government decided to postpone the vote, with the new date yet to be fixed. This has been seen as disappointing but it is hoped that the re-scheduled vote will take place fairly shortly. 

Separately, the Milan section of the Central Division will open on 26 June 2024 (alongside the Paris and Munich section), with three judges having been appointed.

Case law review

Whilst we await the first substantive infringement/validity decisions, the Court has already dealt with a number of important issues, including some that have been considered on appeal. The Court is already showing itself to be efficient, as well as forensically thorough, and confidence is generally high in the quality of the decision-making. However, there have been some inconsistencies which will be important for the Court of Appeal to navigate through to a clear position. Below we highlight some of the particularly interesting issues discussed in the cases to date.

Preliminary injunctions – a higher bar than anticipated?

One of the considerable advantages of the UPC is being able to obtain injunctive relief across up to 17 EU Member States on an interim basis. The first preliminary injunction (PI) was granted by the Munich Local Division in September 2023 (albeit overturned on appeal) in 10x Genomics v Nanostring and there have been a number of such applications made across various sectors (as well as applications for other forms of provisional relief such as preservation of evidence – see further below).

To date, PIs have been granted by the Court of First Instance in:

However, the Court of Appeal's subsequent decision overturning the PI in 10x Genomics v Nanostring suggests that the bar for obtaining a PI is higher than had perhaps been first anticipated from the early decisions on PIs: in addition to being persuaded of the urgency of the matter, the Court must consider on the balance of probabilities that at least more likely than not the applicant is entitled to initiate proceedings and that the patent is infringed (the burden of which is on the applicant). The sufficient degree of certainty will not be established where the Court considers it on the balance of probabilities to be more likely than not that the patent is not valid (the burden of which is on the defendant).

Meanwhile, in a recent high profile decision, the Hamburg Local Division rejected a PI application against UEFA relating to its use of VAR technology at the European Championships (Ballinno v UEFA). The reasons for the decision are yet to be published but it has been reported that the judges were not persuaded by the urgency of the application, nor as to infringement of Ballinno's patent.

When approaching the question of interpretation of patent claims, one key question is the extent to which the Court may consult the 'file wrapper' i.e., statements made by the patentee during the patent prosecution process. The approach to this question is currently uncertain. The Düsseldorf Local Division has said that such statements are not admissible for interpretation and are not generally taken into account (10x Genomics v Curio and Ortovox v Mammut). However, in SES-Imagotag v Hanshow, the Munich Local Division decided that the wording of an application as filed could be considered when interpreting the claims of the granted patent. On appeal, the Court of Appeal upheld the Court of First Instance's decision not to grant a PI on the basis that it was not satisfied, following the approach set out in Nanostring, with a sufficient degree of certainty that the defendant's products infringed the patent. However, as it concluded that the EPO prosecution file did not shed any new light on the interpretation, it decided it did not need to address whether it was appropriate to consult the file wrapper when interpreting the claims.

Another area likely to develop further is the impact of protective letters. Parties concerned about the possibility of a without notice application for a PI (or other provisional applications such as for preservation of evidence) being made against them have one important tool to mitigate against that risk – they can file a protective letter with the UPC Registry. The aim of a protective letter is to ensure that the potential defendant's arguments are before the relevant UPC panel if an application is made in relation to the relevant patent for provisional measures on a without notice basis. In exercising its discretion, the panel will take the protective letter into account and, in particular, should consider whether to summon the parties to an oral hearing.

Whilst a number of protective letters have been filed, and they are undoubtedly a valuable tool in freedom to operate strategies (the cost for filing is relatively low, and they are not notified to the patentee unless and until an application for a PI is filed), cases to date demonstrate that they must be very carefully crafted. In MyStromer v RevoltZycling, for example, the Düsseldorf Local Division disregarded the content of the defendant's protective letter and granted the PI sought. In particular, the defendant had failed to address the validity of the patent in its protective letter. However, it is not always straightforward to do this to a sufficient degree in advance of the claim being issued.

Preservation of evidence (saisie)

A further important provisional measure available in the UPC is an application to preserve evidence and to inspect premises, including on a without notice basis. An applicant for such an order must provide reasonable evidence to support the claim that the patent has been infringed or is about to be infringed. For applications made on a without notice basis, the Court must take into account the urgency (will delay be likely to cause irreparable damage?), and risk of destruction of the evidence.

Orders to preserve evidence have been made in a number of cases, notably in countries which already had a tradition of such applications (e.g., France and Italy). These decisions, to date, suggest a fairly low bar for applicants, including in terms of demonstrating infringement. In C-Kore v Novawell, the Paris Local Division granted a without notice application to secure evidence of infringement by a previous customer (and now direct competitor) of the claimant, subject to a security deposit in the sum of €20,000 (a subsequent application for review of the order was dismissed). In Progress Maschinen v AWM, the Milan Local Division granted without notice applications for preserving evidence and inspection of the defendant's premises, subject to a security deposit of €50,000 (an application was also granted in Oerlikon v Bhagat).

In each of the cases, the Court concluded that the application was urgent given imminent launches/trade fair presence, and was also satisfied of the risk of destruction of evidence.

Timing and stays

It is possible for patents to be the subject of both opposition proceedings before the EPO, and a revocation action before the UPC, and for those cases to run in parallel. In such circumstances, the UPC may decide to stay the revocation proceedings where a 'rapid' decision from the EPO may be expected. The EPO meanwhile has said that it will accelerate its processing where there are parallel opposition proceedings. However, whilst the decision whether to stay UPC proceedings will of course be dependent upon a number of factors, it seems likely that this will be exceptional, given that UPC proceedings are to be dealt with within a year of being commenced. 

For example, in Carrier v Bitzer, the Court of Appeal rejected an application seeking to stay UPC proceedings pending the outcome of an EPO opposition. Bitzer had filed opposition proceedings against the relevant patent at the EPO and, the following day, also filed a revocation action against the patent at the Paris Central Division. The Court of First Instance rejected Carrier's request for a stay of the UPC revocation action, and this was upheld by the Court of Appeal. The Court of Appeal noted that UPC proceedings will normally be completed within a year and so, as a general principle, the UPC would not stay proceedings. Whilst the EPO had, in accordance with its commitment, granted Bitzer's request to accelerate the opposition proceedings, the outcome in the UPC case (which was far advanced with the oral hearing scheduled for 21 June 2024) would be expected well before the EPO decision (oral hearing scheduled for 25 October 2024).

Given this stance of the UPC, it will likely now only be a matter of time before the UPC and/or the EPO will have to deal with the conundrum of conflicting decisions being reached on the same patents and/or the same patents being upheld for grant in different forms by different forums.


During a transitional period (initially of 7 years), it remains possible to opt standard European Patents out of the jurisdiction of the UPC, and a significant number have been opted out. The opt-out mechanism is particularly attractive as, provided no proceedings have begun before a national court in relation to the relevant European patent, a patentee may decide to withdraw the opt-out to bring proceedings in the UPC for pan-EU relief. However, the opt-out does bring with it the risk of being 'pinned' outside the UPC jurisdiction, if a patent challenger begins revocation or non-infringement proceedings against the European Patent at a national level.

Withdrawal of an opt-out is under the spotlight in AIM Sport v Supponor. Having opted its European Patent out of the UPC, AIM Sport subsequently withdrew its opt-out to issue UPC proceedings against Supponor. However, the Helsinki Regional Division ruled that AIM Sport's opt-out was not valid, because there was pending litigation before a national court, and so the dispute was 'pinned' outside of the UPC. The Court concluded that it was irrelevant that the national litigation had been filed before the UPC entered into force (note that the Court did not deal with another scenario, e.g., where the relevant national action had already been concluded).

Another potential hazard in relation to opt-outs is the requirement that all proprietors of all national parts of a European patent must file an opt-out for it to be valid. In Neo Wireless v Toyota, an opt-out had been file by Neo's US parent company for 'all EPC states'. However, the German part of the pending application was owned by its German subsidiary which had not filed an opt-out (and there was no evidence it had agreed to the opt-out by the US parent). As a result, the opt-out in relation to Germany was found to be invalid (a decision upheld on appeal). That meant that the UPC had jurisdiction to deal with a revocation action launched by Toyota against the granted patent in the UPC Central Division.

Transparency and confidentiality

One of the early important issues for the Court of Appeal to resolve concerned the balance between transparency and open justice, with Local / Regional Divisions adopting conflicting approaches to applications by non-parties for access to pleadings. The Rules of Procedure require that these are made available to the public upon 'reasoned request'. In Ocado v Autostore, the Court of Appeal dismissed Ocado's appeal against the Nordic-Baltic Regional Division's decision granting access to its statement of claim to a member of the public.

The Court concluded that the public's general interest in having access to written pleadings and evidence usually arises after a decision is passed. However, access to pleadings whilst proceedings are ongoing may also be appropriate, provided that the applicant has a 'direct legitimate interest' in the subject matter of the proceedings – e.g., for commercial reasons related to validity, potential infringement, licensing etc (subject to any appropriate confidentiality measures).

The Court's decision has now been applied in revocation proceedings in the Paris Central Division (NJOY Netherlands v Juul Labs), where the Court had stayed its decision pending the guidance in Ocado v Autostore. Nicoventures Trading (which has opposed the patent before the EPO but is not a party to the UPC proceedings) applied for access to various documents on the UPC court file. Applying the Court of Appeal's guidance, the Court concluded that Nicoventures had a direct interest given its involvement in the EPO opposition proceedings, with the Court also noting the greater public interest in revocation proceedings in transparency, as well as the fact that EPO files are of course public. However, Nicoventures was not granted access to court documents from the file as relevant decisions and order would be published in any event.

A related issue concerns confidentiality of documents in proceedings. In Panasonic v Xiaomi, part of a series of standard essential patent (SEP)-related litigation between the parties, the Mannheim Local Division, in response to its own application by Panasonic, ordered Panasonic to disclose its licences with third parties (with appropriate redactions). The Court concluded this was appropriate given its broad case management powers and the primacy of EU competition law.

Language of proceedings

A further significant contentious issue in the planning for the UPC has been around the language of proceedings. Under the Rules of Procedure, proceedings before the Central Division will be conducted in the language of the patent. Meanwhile, before Local and Regional Divisions, the patentee can select the language of proceedings from one of the official languages of the country or another designated official language of the EPO. All relevant member states have designated English as an available language. 

As noted above, some 50% of proceedings are now being conducted in English. This figure may be expected to rise further following the Court of Appeal's decision in 10x Genomics v Curio, where the defendant in infringement proceedings in the Düsseldorf Court applied to change from German to English. Both parties were US companies, and the language of the underlying technology was English, as was most of the infringement and defence evidence.

According to the Court of Appeal, relevant factors include: the language mostly used in the technology, the language of the evidence, how a change in language will affect or delay the proceedings, the nationality/domicile of the parties, and their relative size. Where the balance of interests between the parties is equal, the defendant's position will be decisive. A party's representative's language skills and the nationality of the judges will be irrelevant.  

The Court of Appeal's decision was recently applied in Samsung v Headwater, with the Düsseldorf Local Division granting Samsung's request to change the language of infringement proceedings from German to English (the language of the patent). The Court concluded that using German would impact both parties (Headwater is a US company) but was more detrimental to Samsung which did not choose the language in which it was being sued and needed to organise its defence in English before the submissions are translated.

In contrast, however, in Seoul Viosys v Laser Components, the Paris Local Division rejected an application by an intervenor (a Korean company) to change the language of infringement proceedings from French to English. Whilst the patent is in English, the claimant Korean company had chosen to bring its claim in French against the defendant, a French company.

Security for costs

Security for costs may be ordered in the Court's discretion where there is a concern over enforcing a costs order in a particular jurisdiction (i.e., in relation to a territory outside of the EU), or an insolvency risk in relation to one of the parties. Relevant factors include the financial position of the other party and/or the likelihood that a possible UPC court order may not be enforceable or it may be unduly burdensome to do so.

In relation to potential enforcement risks, the Paris Central Division refused to grant security in Edwards v Meril where the claimant is a US company. A US-based claimant was also not a determining factor in ARM v ARM in the Paris Local Division but the Court in that case did grant security because of a lack of information about the claimant's financial position. However, in Harvard v Nanostring (Nanostring is the claimant having brought revocation proceedings), the Munich Central Division ordered Nanostring to pay €300,000 as security. This was because of an identified additional procedural burden and uncertainty in seeking to enforce a UPC costs order in the UK compared to other European jurisdictions (whilst recognising that the UK was not a 'distant jurisdiction'), and also because of what the Court identified as legitimate concerns that Nanostring would not have adequate financial means to meet a costs order.    

Security was also ordered in Ballinno v UEFA, where the Hamburg Local Division ordered Ballinno to provide security in the sum of €56,000. It had failed to provide any evidence as to its financial position and also appeared to have no other assets, apart from its patent. In contrast, in AIM v Supponor, the Helsinki Regional Division was satisfied that the claimant had sufficient financial means and rejected an application for security.

Meanwhile, whilst security for costs can be ordered against a defendant as well as a claimant, it cannot be awarded in a PI application. In 10x Genomics v Curio, the Düsseldorf Local Division granted 10x Genomics its application for a PI but refused its application for security for costs against the defendant on this basis.



As we move into the second year of operation of the UPC, all eyes will be on the substantive decisions issued by the Courts relating to infringement and validity, and the approach to remedies, and how those issues may be dealt with on any subsequent appeal. Other areas to watch out for include the Court's approach to difficult questions such as its potential long arm jurisdiction. We also await developments in other Member States joining the UPC/UP, in particular Ireland. Practically, users of the Court will also be keen to ensure problems with the Case Management System (CMS) are ironed out.

More generally, wider developments will also have an impact, such as the EU Commission's controversial proposals in relation to transparency regarding licensing and enforcement of standard essential patents, as well as plans to implement a Unitary SPC.


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