Having officially opened its doors on 1 June 2023, the Unified Patent Court (UPC) is up and running. With the one hundred cases milestone having been reached, we recap and review some of the more interesting decisions from the UPC in its initial months, although it is perhaps too early to divine clear trends and the Court of Appeal's role is likely to be pivotal on a number of issues.
There have already been several cases considering the approach to take to preliminary injunctions (PI), a particularly valuable remedy given the potentially far-reaching geographical scope of the UPC.
Ex parte PI
On 22 June 2023, the Düsseldorf Local Division handed down the UPC's first ex parte (without notice) PI decision (UPC_CFI_177/2023). Electric bike manufacturer myStromer AG had applied for a PI in relation to an alleged infringement by RevoltZycling ('Revolt') of myStromer's patent EP 2546134B, which protects a combination structure consisting of a bicycle frame and motor hub.
It is interesting to note how this case unfolded. After Revolt had announced delivery of its e-bikes ahead of a trade show, myStromer sought an inspection. Clearly alive to a potential PI claim, Revolt filed a protective letter with the UPC, asking that the request be dismissed or, alternatively, that no decision should be made on any PI application without oral proceedings.
We discuss protective letters in this article. Their aim is to try to ensure the defendant's arguments are before the relevant UPC panel/judge when it is considering an ex parte application for provisional measures. However, it appears that the contents of the protective letter in this case may have made it easier for the panel to conclude that an ex parte preliminary injunction should be granted: Revolt had not significantly denied its product infringed the patent, its arguments on exhaustion had been dealt with in parallel proceedings, and it had not challenged the validity of the patent. Clearly, careful consideration must be given to what goes into a protective letter. The risk is that the court assumes that all points have been raised and therefore, if they can be quickly addressed by the court, there may be little incentive to prevent it from issuing a PI.
myStromer was ordered to pay €500,000 in security, also reflecting the broad reach of the injunction. Revolt was later penalised by the UPC in its first penalty payment for failure to comply with the order.
Inter partes PI
The Munich Local Division granted the first inter partes PI to 10x Genomics on 19 September (UPC_CFI_2/2023), preventing NanoString from selling products in all 17 (current) UPCA member states. This was the first claim lodged in the UPC and also concerns the first Unitary Patent granted by the EPO (EP 4 108 782), with the decision to grant a PI taken after two days of oral proceedings. In particular, the panel were satisfied 'with a clear preponderance of probability' that the patent was valid, and it was clear that provisional measures were necessary. Nanostring has indicated it will appeal.
Subsequently, however, 10x was denied a second preliminary injunction sought against Nanostring on the basis of alleged infringement of its patent EP 2 794 928 B1.
Use of 'saisie'
Under article 60 UPCA, an applicant presenting evidence that a patent has been or is about to be infringed can seek an order to preserve relevant evidence. This is similar to the saisie-contrefaçon regime available in some jurisdictions, including France, Belgium and Italy.
In UPC_CFI_127/2023 and UPC_CFI_141/2023, Oerlikon Textile GmbH & CO KG filed two applications to preserve evidence at the Milan Local Division, arguing that the applications were urgent because the defendants were showing allegedly infringing products at an international textile trade fair in Milan. It relied on various documents (including brochures, a trade stand poster, a video taken from a bar code found at the stand, and technical examinations by a patent attorney), which persuaded the panel to grant the preservation order.
These decisions demonstrate that 'saisie' can be an effective remedy in the UPC, though there is a high threshold for such applications i.e., an application must be well justified, and clearly detail the measures requested, why they are needed, and any facts and evidence relied on.
Access to pleadings
One area where we have seen contrasting decisions between different Divisions, and a need for guidance from the Court of Appeal, concerns access to pleadings. This is a potential concern for transparency and open justice, as the UK approach is that non-parties are entitled to court documents unless they are confidential or the court otherwise orders.
The Nordic Baltic Regional Division has granted access to pleadings (UPC_CFI_11/2023), concerning Ocado Innovation Limited's infringement action, which it had later withdrawn following settlement. The applicant sought access to 1) Ocado's statement of claim, 2) any orders made in the case and, if possible, 3) any orders made in parallel cases.
Under the Rules of Procedure, any such request must be 'reasoned'. The applicant stated that they were "interested to see how the claim filed was framed, particularly since it was filed in parallel with cases in other divisions, and that he believed there is broader public interest in this information being made available for public scrutiny and discussion as the new court system launches and develops". Access to the statement of claim was granted, although the document was not sent to the applicant immediately to allow time for an appeal to be filed.
This decision should be compared to that of the Munich Central Division in two earlier cases (UPC_CFI_75/2023 & UPC_CFI_1/2023) where it decided that access to the pleadings and evidence for the purpose of education and training, and to form an opinion on the validity of a patent out of a personal and professional interest, were not legitimate reasons to accede to such a request.
Ineffective withdrawal of opt-out
On 20 October 2023, the Helsinki Local Division issued a decision (UPC_CFI_214/2023) relating to a purported withdrawal of an opt-out. During a transition period of seven years (which may be extended), the owner of a classic European Patent can opt that patent out of the UPC's jurisdiction. The owner can later decide to withdraw the opt-out, and bring the patent back into the UPC, for example if it wants to seek relief in that forum. It is not possible to withdraw an opt-out if an action has already been brought before a national court.
AIM Sport Vision AG filed an opt-out request on 12 May 2023. On 5 July 2023, it filed a request to withdraw the opt-out and, on the same day, lodged a statement of claim for infringement. However, at the time of filing the request to withdraw, proceedings were pending in relation to the patent before the German national courts. The Helsinki Local Division held that the request to withdraw the opt-out was ineffective due to the pending national infringement and invalidity proceedings – the relevant provisions of the UPC Agreement applied retroactively and the panel rejected the argument that only actions commenced in a national court after registration of the ot-out would prevent its withdrawal.
First CoA decision – effective service of a claim and conditions for extension to the deadline for filing an objection and a response
In Court of Appeal decision (UPC_CoA_320/2023), Amgen had filed statements of claim which both referred to annexes which were not filed until a later date. The Court of Appeal confirmed that a statement of claim can validly be served on a defendant without such annexes, provided that the statement of claim still enables the defendant to assert their rights. However, the Court granted Sanofi an extension for filing its objection and response, equal to the period for which the annexes were not available, which will have been welcome given the short timescales for defendants to respond to a claim.
Language of proceedings
The Hague Local Division has granted (UPC_CFI_239/2023) a Spanish defendant's request (made before filing its defence) to change the language of the proceedings from Dutch to English (English being the language of the granted patent). The panel noted that both parties had a good command of English, and it had been used in the pre-action communications. It was sufficient to assess whether the use of Dutch was significantly detrimental to the defendant, and the panel concluded this would be the case. Being sued in a language they did not speak was an important inconvenience for the defendant, even if assisted by Dutch representatives.
Confidence in the new system can also be measured by uptake of Unitary Patents. The EPO's Unitary Patent dashboard indicates that, as of 13 November 2023, 13,620 requests for unitary effect have been received, representing a 15.8% uptake rate for the current year, with respect to all European patents granted.
The Unitary Patent has been particularly favoured by applicants in the field of medical technology, with those in the fields of civil engineering, transport, measurement and computer technology also filing a large number of requests.
To meet the translation requirements, the dashboard shows that most applicants are translating their patents into Spanish. This was expected because of the need to obtain protection in Spain through the normal validation of the European patent, as Spain is not taking part in the UPC. The second highest translation language is English.
The UPC is willing and able to implement a number of measures, often in a very short time frame. Provisional measures such as preliminary injunctions (both ex and inter partes) and measures to allow applicants to preserve evidence have already been issued. Meanwhile, protective letters have been filed with varying degrees of success, and their contents should be carefully considered.
An understanding of the UPC opt-out provisions is also essential to allow applicants to effectively enforce their patents in the jurisdiction of their choice – third parties may also be able to use this information to 'pin' applicants outside the UPC, thereby making pan-European enforcement only possible through national proceedings.
In certain areas, we expect further clarification of the Rules of Procedure from the Court of Appeal e.g., in relation to the important issue of access to pleadings. We will report on these developments as and when they arise.