Welcome to our latest UPC/Unitary Patent update.
In this edition, we report on some key developments including the Munich Local Division categorically aligning with the European Patent Office's 'problem-solution approach' to assessment of inventive step, through to the UPC Court of First Instance starting to apply, in earnest long-arm jurisdiction, following the Court of Justice's decision in BSH Hausgeräte v Electrolux.
Updated statistics
The UPC has issued its latest statistics up to 1 April 2025, with the Court now just shy of the 800 case mark, having received a total of 798 cases as that juncture. Continuing the trend from previous updates, the Munich Local Division has received the largest number of actions, and English continues to lead the way as the language of proceedings (54% of cases at the Court of First Instance).
The UPC has also issued its first Annual Report, reporting on its activities, case law and key developments since the UPC began operations on 1 June 2023.
Meanwhile, there have now been over 8,000 requests for unitary effect, with 7,600 Unitary Patents having been granted. The European Patent Office (EPO) has also issued an update to the Unitary Patent Guidelines.
Case developments
Munich Local Division adopts EPO problem-solution approach – Edwards Lifesciences Corporation v Meril GmbH & ors, UPC_CFI_501/2023
In this case concerning a patent relating to a prosthetic heart valve, the Munich Local Division has stated that, when assessing whether an invention is obvious having regard to the state of the art, the problem-solution approach (PSA) adopted by the EPO should "primarily be applied as a tool to the extent feasible". The aim of doing so was said to be to enhance legal certainty and further align the UPC's jurisprudence with that of the EPO and Boards of Appeal.
Other UPC divisions and the Court of Appeal have considered the approach to inventive step and applied a range of approaches – some have explicitly referred to the PSA whereas others have used an approach that is similar to the test of inventive step applied by the German Federal Court of Justice. The Munich Local Division noted that both tests, provided they are correctly applied, should lead to the same outcome in most cases. Given that no test was enshrined in the European Patent Convention, and they lead basically to the same result, this meant either should be used.
However, the Munich Local Division decided that it intended to use the PSA, and to state that explicitly, to provide legal certainty for users of the system. Given that, as highlighted above, the Munich Local Division has received the majority of infringement actions, it will be interesting to see if other divisions will follow suit.
Paris Local Division confirms long-arm jurisdiction of UPC – Mul-T-Lock France & anr v IMC Créations, UPC_CFI_702/2024
Applying the CJEU's important decision confirming the long-arm jurisdiction principle in BSH Hausgeräte v Electrolux, the Paris Local Division has determined it has jurisdiction to hear an infringement action relating to non-UPC designations of a European Patent in EU/Lugano Convention states (Spain and Luxembourg), as well as a third state (the UK). The claim is brought against a French domiciled company and one domiciled in Switzerland – the Court concluded that it had jurisdiction over the Swiss defendant in relation to its actions in Switzerland because the other defendant was domiciled in the EU (as an 'anchor defendant').
In particular, the Court found as follows:
- In relation to EU / Lugano Convention states which are not members of the UPC, the Court had jurisdiction to hear the infringement action. Where the validity of the patent was challenged, the UPC had the power to suspend examination of the infringement where there was a reasonable and not insignificant chance that the patent would be invalidated by the court of the Member State of grant.
- In relation to infringement of a European patent designating the territory of a third State (i.e. the UK), the UPC could rule on infringement where the defendant was domiciled in its territory, and could also rule on the validity of that third state patent, albeit the decision in this respect would only have effect between the parties.
This is developing case law. It remains to be seen, of course, how the UK courts may look upon such issues.
Milan Local Division also confirms long-arm jurisdiction of UPC – Alpinestars Research v Dainese, UPC_CFI_792/2024
Similarly, in this case, the Milan Local Division has applied the CJEU's BSH decision to conclude that it has jurisdiction over defendants domiciled in Italy to adjudicate on infringement issues relating to European patents validated in non-UPC countries, namely Spain.
Court of Appeal extends preliminary injunction to Romania – Sumi Agro & anr v Syngenta, UPC_CoA_523/2024
We reported on this case concerning a patent for herbicide compositions in our October 2024 update. The Court of Appeal has upheld the Munich Local Division's decision granting the preliminary injunction. It also accepted Syngenta's submission that the Order should be extended to Romania which acceded to the UPC Agreement on 1 September 2024 (i.e. after Syngenta had issued its application).
The Court also considered that it was not necessary to order Syngenta to provide security for enforcement of provisional measures. The defendant could still bring arguments to support such an application once the merits of the action had been determined. Sumi Agro had pointed to the fact that Syngenta had its principal place of business in the UK, with no international treaty allowing enforcement of UPC damages decisions. However, this argument was unsubstantiated and, in any event, Sumi Agro was itself based in the UK. Costs were awarded as the proceedings concluded the action.
Court of Appeal overturns refusal of preliminary injunction – Abbott Diabetes Care v Sibio Technology & anr, UPC_CoA_382/2024
We reported on this case concerning on-body glucose sensor devices when it was before The Hague Local Division in our July 2024 update.
The Court had granted Abbott a preliminary injunction in one case between the parties but rejected its application in another, on the basis that it was more likely than not that the relevant claim would be decided to contain added matter compared to the original application as filed.
The Court of Appeal has now overturned that second decision. In particular, it noted that the assessment of added matter cannot be restricted to those parts of the original application which the patent proprietor indicated as a basis for an amended claim during the examination proceedings at the EPO. This was because a proper understanding of those parts also required an assessment of their content in the context of the disclosure of the application as a whole. Applying that standard, which appears closely aligned with the "gold-standard" of the EPO (if arguably slightly more forgiving), it was not more likely than not that the patent contained added matter.
On claim construction, the Court applied the general principles established in NanoString to address several disputed claim construction issues. Notably, the Court considered the correct approach to the interpretation of means-plus-function language. Of particular interest was the Court's agreement with Sibionics' argument that the words "configured to" must be understood to mean "suitable for". However, in later applying this interpretation during the novelty analysis, the Court took the opposing view to Sibionics - finding that the prior art device did not comprise a base portion "suitable to be adhered to the skin surface by an adhesive patch". In that context it seems that the Court understands the words "configured to" to mean "able to fulfil the function of", which is broadly in line with the EPO approach.
The Court rejected the rest of Sibionics' novelty and inventive step attacks. Having also found the likelihood of infringement, the Court thus granted a preliminary injunction against Sibionics in all UPC Contracting Member States where the patent was in force.
Court clarifies substantive law relating to infringing acts – Hurom Co v NUC Electronics, UPC_CFI_162/2024 and UPC_CFI_163/2024
In this case before the Mannheim Local Division, the Claimant successfully sued the Defendant for infringement of its patent relating to a juice extractor. One issue in the case was the substantive law to be applied. NUC argued that, as its model was not sold in Europe until Autumn 2023, the relevant UPC laws should apply. The Court held that, for acts committed after the entry into force of the UPC Agreement on 1 June 2023, the substantive law set out in the Agreement should apply. However, for acts committed exclusively before the Agreement entered into force, substantive national laws should apply.
As for ongoing acts, the substantive law in the UPC Agreement should apply, though each party could rely on national law still in such a situation if it was favourable to its position compared to the UPC Agreement and Rules of Procedure (subject to substantiation).
The Claimant's actions cover both UPC jurisdictions (Germany, Denmark, France, Italy and The Netherlands) as well as EU and non-EU states outside the UPC (Poland, Spain, UK and potentially Turkey). The Court separated out the non-UPC territories pending the CJEU's decision in BSH Hausgeräte v Electrolux, which are now likely to proceed given the outcome in that case.
Court of Appeal extends access to confidential information to party's US attorneys – Daedalus Prime v Xiaomi Technology & anr, UPC_CoA_621/2024
In this case before the Hamburg Local Division, Daedalus had filed an infringement action against Xiaomi. Xiaomi requested that access to certain passages in its defence and accompanying witness statement relating to the architecture of its MediaTek processors be restricted in accordance with Rule 262A of the UPC Rules of Procedure. The Hamburg Local Division granted this request and limited access to those passages to Daedalus' legal representatives. Following an application by Daedalus, access was later extended to its managing director, but not to its US attorneys. Access by the US attorneys was considered by the Court of Appeal, which granted them access.
The Court of Appeal noted that the number of persons to whom access is restricted should be no greater than necessary to ensure compliance with the parties' rights to an effective remedy and to a fair trial. Relevant considerations included: a person's role in the proceedings, the relevance of the confidential information to the performance of that role, and the trustworthiness of that person in keeping the information confidential. The fact that the US attorneys were not Daedalus employees, nor were they UPC representatives, did not preclude them being granted access.
Further, the Hamburg Local Division had reached an unfounded conclusion that Daedalus was seeking access for the US attorneys to use the confidential information in the context of parallel US proceedings – whereas, in fact, it sought access as the attorneys were involved in the UPC proceedings by providing technical input (and were more familiar with the technology than the UPC representatives).
Belgium Local Division rejects preliminary injunction for lack of urgency – Yealink Network Technology & anr v Barco, UPC_CFI_582/2024
In this case concerning a patent for a wireless meeting room system, Barco applied for a preliminary injunction against Yealink in the Brussels Local Division. Yealink challenged the Brussels Court's territorial competence, arguing that Barco had not sufficiently explained why the actual or threatened infringement had occurred or was likely to occur in Belgium and not in another contracting state. In particular, it argued that reference to sales/offers for sale in Belgium via websites that were not connected with Yealink were not sufficient. Yealink argued that the claim should have been brought where Yealink Europe was domiciled (The Hague Local Division) or the (unspecified) local division where it was committing any allegedly infringing acts.
The Court concluded that the Brussels Local Division did have competence. The Yealink devices on which Barco based its infringement allegations had been proven to be ordered from and delivered to Belgium, and Yealink was actively promoting and offering its devices to end customers in Belgium. Belgium was therefore a contracting state where the actual or threatened infringement had occurred.
However, the Court rejected Barco's application for lack of urgency: unitary effect had been registered on 23 August 2024, and Barco commenced its proceedings on 2 October 2024. Barco had been granted the European patent (on which unitary effect was subsequently requested) on 12 June 2024 - this was the determining date for assessing urgency. Given the factual circumstances of US proceedings between the parties, Barco was aware of the allegedly infringing devices on or before 12 June 2024. The Court therefore concluded that 15 July 2024 would have been a reasonable subjective earliest date for initiation of proceedings, some two and a half months before Barco actually took that step.