Unitary Patent/Unified Patent Court

This article is part of the latest edition of our Patents: Review of the Year publication.

After more than a decade in the making, the Unified Patent Court (UPC) finally opened its doors on 1 June 2023. Alongside it, the unitary patent (UP) was also introduced: a new European patent right with effect across all countries participating in the UPC at the time of grant. There are currently 17 participating states (Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden), most of which are hosting a Local or Regional Division (which will generally hear infringement actions, actions for provisional measures and injunctions). Bulgaria, Malta and Luxembourg are not hosting Local Divisions but Germany has made up for that by hosting four, in Düsseldorf, Hamburg, Mannheim and Munich. Ireland will hold a UPC referendum in June 2024 which, if the Irish population returns a ‘yes’ vote, will allow Ireland to ratify the UPCA and become a participating state, at which point it has expressed an intention to introduce a Local Division in Dublin.

Shortly after the UPC start date, Milan was finally confirmed as the third seat of the Central Division (which will generally hear revocation actions and actions for declarations of non-infringement). From June 2024, Milan will have responsibility for human necessities patents (excluding SPCs), while the Munich seat will be responsible for mechanical engineering, lighting, heating, weapons, blasting, chemistry and metallurgy (excluding SPCs) and the Paris seat will be responsible for all other International Patent Classifications plus SPCs. Until the Milan seat becomes functional, its cases are being split between the Munich and Paris seats.

A summary of the highs and lows of the first seven months of the UPC and some of the early decisions now follows.

Early statistics (as at year end) – Almost 600,000 UPC opt-outs were filed in the first seven months, representing at least a third of all European patents (EPs) that would otherwise fall under the jurisdiction of the UPC, and most likely more, given the possibility to file bulk opt-outs covering multiple EPs. Over a thousand of those opt-outs had already been withdrawn by the end of 2023 and some of the patents for which the opt-out was withdrawn were asserted within the UPC shortly thereafter. There was also significant uptake of the new UP (which must be litigated within the UPC and cannot be opted out), with over 15,000 requests for UPs filed. A total of 67 infringement actions and 24 revocation actions were filed in 2023, with the Munich Local Division proving most popular for infringement actions, 34% of all infringement actions being filed in that Division.

English was the dominant language of revocation actions (85%), which must be filed in the language of the patent. German was the most popular language for infringement actions (59%), followed by English (30%), although it will be interesting to see how this evolves over time, particularly given that all Local Divisions and the Nordic-Baltic Regional Division (the only Regional Division so far) have confirmed that they will accept English as the language of proceedings (a detail that was confirmed only shortly before the UPC start date). The language of proceedings was switched to English after filing in a number of actions (Plant-e Knowledge v Arkyne Technologies¹¹⁵ and Amgen v Sanofi¹¹⁶), although a change from German to English was refused by the Mannheim Local Division in Panasonic v Oppo¹¹⁷ (currently under appeal).

IT – Unfortunately, the early days of the UPC were beset with IT issues as the UPC case management system (CMS) struggled to cope with the influx of last-minute opt-out requests before the UPC start date. This led to the first UPC cases being filed by hand following a number of last-minute dashes to various UPC registries. It also led to one of the first procedural UPC decisions in the proceedings between Sanofi and Amgen¹¹⁸. On day one of the UPC, Amgen filed an infringement action against Sanofi and Regeneron before the Munich Local Division and, in parallel, Sanofi filed a revocation action against Amgen in relation to the same patent before the Munich Central Division. However, with the CMS being down, both actions were filed by hand at different registries: Sanofi’s revocation action was filed in Luxembourg and Amgen’s infringement action was filed in Munich.

Amgen objected that Sanofi’s revocation action was inadmissible on the basis that Amgen had filed their infringement action first, so Sanofi was blocked from filing a revocation action by Art. 33(4) of the UPCA, which required them to bring their revocation action in the same Division as the existing infringement action. Amgen also argued that, even if the revocation action was not blocked by Art. 33(4), the Luxembourg registry was the wrong place for the revocation action to be filed and that it should have been filed in the sub-registry of the Munich Central Division instead. However, the UPC Judge (András Kupecz, sitting in the Munich Central Division) sided with Sanofi, finding that Sanofi had filed their revocation action 20 minutes before Amgen’s infringement action and that the Luxembourg registry was an appropriate location to file proceedings under Rule 4.2 of the Rules of Procedure (RoP), which allow parties to file at any registry when the CMS is non-functional.

The result is bifurcated proceedings, with the Munich Central Division hearing Sanofi’s revocation claim and the Munich Local Division hearing Amgen’s infringement claim. To add further complexity, the Munich Local Division is also hearing a counterclaim for revocation by Regeneron (the second defendant in the infringement action, which, unlike Sanofi, did not file a separate revocation action).

Preliminary Injunctions (PI) – Although it will be many months before the first main action decisions are available (the first trials are not expected to take place until summer of 2024) there have been a number of early PI decisions. In myStromer v Revolt¹¹⁹ (Düsseldorf Local Division), a PI was granted against Revolt on 22 June 2023, only 3 weeks into the new system, after Revolt’s e-bike was displayed at a trade fair in Frankfurt. One point of interest is that the PI was issued on an ex parte basis despite Revolt filing a protective letter, with the decision noting that the court did not find the arguments in the protective letter convincing. This leads to some uncertainty regarding the utility of filing protective letters in the new system and it will be interesting to see whether other decisions follow the same approach.

The first inter partes PI decision was issued in CUP&CINO v Alpina¹²⁰ in the Vienna Local Division, which related to milk frothing technology. The case is notable for one of CUP&CINO’s patent attorneys mistakenly opting the patent out of the UPC after the PI action had been filed. However, the patent attorney in question was able to breathe a sigh of relief when the judges confirmed that it is not in fact possible for an opt out to be filed after an action has been commenced. Unfortunately for CUP&CINO, having heard the parties’ arguments and seen Alpina’s milk frother in action at the hearing, the Court was not convinced of infringement and denied the PI. 

Up next were the 10x Genomics v NanoString¹²¹ proceedings in the Munich Local Division. 10x Genomics sought PIs against NanoString in respect of two of its patents relating to RNA and protein analyte detection. The Munich Local Division granted a PI in relation to the first patent in a decision running to over 100 pages, which included a detailed analysis of patent validity and harm to the patentee. Notably, the PI was issued without any requirement for 10x Genomics to provide any security. NanoString appealed the decision, leading to the first UPC Court of Appeal hearing in December¹²².

10x Genomics was less successful in relation to the second patent: the Munich Local Division rejected the PI application on the basis that infringement had not been established. However, luckily for 10x Genomics, it already had an injunction in place in Germany under the same patent, although this raises the question of how the Munich Local Division had jurisdiction to consider the request in the first place in light of the lis pendens rule in the Brussels Regulation (a point that is not addressed in the decision).

AIM v Supponor¹²³ involved another unsuccessful PI request. AIM had initially opted its patent out of the UPC but sought to withdraw that opt-out shortly before filing the PI request (a common UPC strategy which protects the patent from a centralised revocation action before an infringement action is filed). Unfortunately, AIM’s strategy backfired as the Helsinki Local Division held that the patent’s opt-out could not be withdrawn, since the patent had been subject to German infringement and nullity proceedings in 2022, still pending on appeal, and therefore Art. 83(4) of the UPCA applied to block the opt-out withdrawal.

The final PI decision of 2023, issued on 20 December, was in SES-imagotag v Hanshow¹²⁴. The Munich Local Division dismissed SES-imagotag’s PI request, finding that SES-imagotag’s patent to electronic price tags was not infringed. In so doing, the Court followed Hanshow’s argument that claim amendments made during patent prosecution are relevant for interpretation of the claims and that the original claims should be used as a guide to claim interpretation, an approach that is out of step with both the EPO and many national courts of UPC states. It will be interesting to see whether the Court of Appeal provides any clarity on this point.

Seizure and inspection orders – The UPC demonstrated its ability to act quickly and decisively in a number of early seizure and inspection orders. In Oerlikon v Himson and Oerlikon v Bhagat¹²⁵, the Milan Local Division issued ex parte seizure orders for a trade fair within a day of Oerlikon filing the applications in June 2023. In Jozef Frans Nelissen v OrthoApnea¹²⁶, the Brussels Local Division also flexed its muscles, granting a request for an ex parte inspection at a symposium in Belgium in September 2023, within a day of the application being filed.

Access to documents – One of the most controversial aspects of the new system concerns transparency and, in particular, public access to documents on the register. Rule 262.1 of the RoP distinguishes between public access to (a) decisions and orders and (b) written pleadings and evidence, the former being available as of right and the latter requiring a “reasoned request”. The distinction between the two sets of documents, apparently to address GDPR concerns, was introduced to the RoP in July 2022 and changed the previous draft of the rules. Practitioners were reassured at the time that the threshold for granting document access requests would be low but unfortunately this does not appear to have been the case so far in practice. Requests by interested parties for access to written pleadings and evidence were denied in the Sanofi v Amgen¹²⁷ and Astellas v Osaka¹²⁸ proceedings (Munich Central Division), Oerlikon v Himson¹²⁹ proceedings (Milan Local Division), 10x Genomics v Nanostring¹³⁰ proceedings (Munich Local Division) and NJOY Netherlands v VMR¹³¹ proceedings (Paris Central Division). The sole case in which a request for access under Rule 262.1(b) was granted was in Ocado v Autostore¹³² (now resolved by a global settlement), in which a request for access to the statement of claim was granted by the Nordic-Baltic Regional Division, although access to the orders made in parallel cases between Ocado and Autostore in the Düsseldorf and Milan Local Divisions was denied on the basis of lack of jurisdiction. That order was subsequently appealed and the order stayed pending the Court of Appeal’s decision.

Further requests for documents were filed in other proceedings but remained outstanding at the end of 2023, including AIM v Supponor¹³³ (Helsinki Local Division), Joseph Franz Nelissen v OrthoApnea¹³⁴ (Brussels Local Division), NJOY Netherlands v Juul¹³⁵ (Paris Central Division), Plant-e v Arkyne¹³⁶ (Hague Local Division) and a new request in Astellas v Osaka¹³⁷ (Munich Central Division). It is hoped that the Court of Appeal and/or the Divisions considering the outstanding requests for documents will take a more generous approach to reasoned requests in 2024 to ensure transparency and open justice within UPC decision-making.

2024 will be another exciting year for the UPC, with the first main action decisions expected in the second half of the year and opportunities for the Court of Appeal to clarify the approaches to be taken in relation to important substantive legal issues including infringement analysis and jurisdiction and a whole host of interesting and no less important procedural issues. Depending on the outcome of the Irish referendum in June, it may also be the year that we see Ireland joining the list of participating states and steps being taken to set up a new Local Division in Dublin.

Continue reading the other sections in publication:

1. Claim construction and infringement
2. Validity
3. FRAND
4. Supplementary protection certificates (“SPCs”)
5. Procedural issues
6. Unitary Patent/Unified Patent Court

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