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

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 third instalment of our regular UPC update webinars, we took an in-depth look at the last 3 months of the UPC - including preliminary objections, preservation of evidence (seizures), claim construction before the UPC, as well as some other general stats on cases and language of proceedings.

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

Key takeaways: UPC Webinar Part III

General 

• According to the UPC report of end of February, the UPC is handling so far 96 infringement actions, 23 applications for provisional measures, preservation of evidence and orders for inspection and 24 revocation actions. 
• Language of proceedings: German leads English by 48% to 43%, but this may be influenced by early cases in German local divisions. An order changed the language from Dutch to English, but a German-to-English change was refused due to insufficiently substantiated arguments.

Preliminary objections (PO) 

• According to R. 19.1 RoP, PO must be filed within one of month of service of Statement of claim and is limited to objections against (i) the competence of the UPC (territorial and temporal), (ii) the jurisdiction of the Division and (iii) the language of the Statement of claim. Other objections (outside the scope of R. 19 RoP) can be dealt with in main proceedings. 
• Territorial scope of UPC might change between the lodging of the complaint and the oral proceeding so that the requests should be formulated to determine UPCA territory at the time of oral proceedings; temporal scope also covers infringement committed before entry into force of the UPCA on June 1, 2023 (cf. ORD_576853/2023 of Munich Local Division, J. Zigann). 
• Judge Rapporteur only (not the complete panel) deals with PO by taking a decision or by ordering to deal with PO in main proceedings; decision/order is appealable.

Regarding the Preservation of evidence (seizures) 

• Ex parte orders for preserving evidence and inspection may be a powerful tool in an offensive enforcement strategy. It is recommended to select local divisions with a national tradition in dealing with similar measures. Execution of the measures shall comply with national law where they are enforced. 
• National route for Saisie / descrizione for European patents e.g. in Italy, Belgium and France still an option (e.g. if an UPC ex parte order cannot be granted e.g. because of lacking urgency). 
• In defensive strategy, protective letters possibly prevent an ex parte order for preserving evidence and inspection.

Claim construction before the UPC (first indications only so stay tuned) 

• Art. 69 EPC remains the central legal provision for claim construction. 
• First guidance on claim construction by Court of Appeal in re. NanoString (UPC_CoA_335/2023) is at least very similar to German case-law in this regard. 
• The relevance of prosecution history or claim construction is not clearly set out so far, but according to German case-law it is only relevant to a limited extent (UPC_CFI_292/2023 – Decision of the Munich LD). 
• The decision of the Munich LD may be interpreted as using the claims of the A1- publication for construing the granted claims but arrives at the same conclusion that a German court presumably would have achieved (appeal pending). In any case, no clear trend can be identified yet as to whether the UPC will consider prosecution during claim construction.

If you missed our previous webinars in September and December, you can view the recordings and key takeaways at the links below:

VIEW UPC WEBINAR 1 HERE

VIEW UPC WEBINAR 2 HERE

Stay tuned for the next one!