The Unified Patent Court (UPC) Webinar Series: Part Two

View the recording here

When the UPC opened its doors for business on June 1st, 2023, no one could really predict what this would mean for patent rights holders or the lawyers representing them.

Bird & Bird’s international patent team has been present in the courts since the first week and has been compiling its learnings from day one. During the second of our regular UPC update webinars, we took an in-depth look at the last 3 months of the UPC - including case law insights, opt-out trends, consequences of opting out and public access to court files, among others - and what developments we can expect to see in the near future.

If you'd like to watch the recording, please click the button above. For more information on the UPC, click here.

Below are two articles mentioned during the session:

• UPC The first ruling of the Helsinki local division clarifies the effective withdrawal of optout
  
• Public access to UPC filings

Key takeaways

1. After a little over six months’ operation, according to the public register (which does not show all the cases) 55 infringement actions have been filed and 23 revocation actions (not including counterclaims). There have also been 9 applications for provisional and protective measures, including PIs.
2. In addition there are 42 counterclaims for revocation, which number is going to go up rapidly over the next few weeks, and take the total number of actions up to 200 or so. However these only concern 73 patents so far because many are the subject of multiple proceedings.
3. Approx 30% of new patents are granting as UP, which is higher than many envisaged. In addition to high numbers in tech, medical device companies, as in the UPC itself, are especially active.
4. Strategy before starting or defending a claim (including counter-action or counterclaim) can make a big difference.
5. Different entities in the same group can start their own separate revocation actions (or counterclaims) against the same patent(s).
6. Will proceedings be bifurcated? The UPC will deal with this soon.
7. Think twice before opting a patent out. It could turn into a lock-out.
8. Local divisions seem to take a pragmatic approach when it comes to shifting the language of the procedure to the language in which the patent was granted.
9. PI proceedings in the UPC go at a very fast pace compared to most countries.
10. Prepare well for PI proceedings in advance of any PI being filed, whether as a patentee or a defendant.
11. Currently, access to the Court file may require specific, concrete and legitimate reasons. However, the Court of Appeal may soon adopt a different approach.
12. Use Rule 262A to request confidentiality if filing a pleading or evidence containing confidential information.

The first six months of the UPC have given early indications for how the Court may operate but review of early decisions by the Court of Appeal and the first final hearings are eagerly awaited! Stay tuned for the next instalment of our UPC webinar series, featuring further faces from our international team and further updates on the development of the UPC.

View part one here