One year into the UPC – Legal diversity breeds success

On May 31, 2024, BARDEHLE PAGENBERG and JUVE Patent hosted a joint UPC event for the second time. This year, we celebrated the first anniversary of the Unified Patent Court (UPC) at the iconic Ritz Hotel in Paris. Mathieu Klos (JUVE Patent) acted as the master of ceremony.

The purpose of this year’s event was to untangle the factors that determine the outcome of the more than 200 infringement, revocation, and preliminary injunction cases which are currently pending before the UPC. Well over 50% of these cases are pending in Munich and Paris, both UPC hotspots. It is fair to say that the keynote speaker Pierre Véron, the expert in-house panelists – Sophie Pasquier (Philips), Suzanne Wassmann (Solvay), Anne Julia Meinel (Roche Diagnostics), Eric Whitaker (10X Genomics), and Alexander Haertel (Deutsche Telekom) – as well as the high-profile audience unanimously arrived at the same conclusion: it’s the legal diversity of this truly international court and the different legal cultures that were all blended into the UPC’s legal framework.

It goes without saying that hardly anyone is better suited to answer this question than Maitre Pierre Véron, one of the founding fathers of the UPC. His excellent keynote speech, shed light on the creation of the UPC Agreement and the Rules of Procedure (RoP). This revealed why the UPC’s mission of a 12-month time period from the filing of a complaint until trial is enshrined in the preamble of the UPC’s RoP. The reason behind it is simple: UK judges mentioned that such a time period was realistic in UK patent litigation proceedings and that continental European patent trial court judges could certainly adjust to this UK practice. In fact, they can, as the current UPC time schedules for the pending infringement and revocation actions on the merits shows. We are happy to share the presentation of our keynote speaker Pierre Véron with you. Feel free to download the slides here.

So, all sunshine and rainbows? Certainly not. The first panel, moderated by Julien Fréneaux (Managing Partner, BARDEHLE PAGENBERG, Paris office), discussed the state of play at the UPC as well as current and emerging trends. The panel unanimously agreed that 200 cases are more than a proof of concept. The UPC is a running system and the continuous uptake of 15 – 20 cases each month shows that UPC users trust the system. And these users are global users; no one would have placed a bet a year ago that a Japanese company would head the table of most active UPC users. When it comes to current trends, concerns were expressed that the UPC Court of Appeals has for the time being not yet issued a single injunction. The Court of First Instance and its local divisions (in particular Munich and Düsseldorf) appear to show more confidence when it comes to injunctive relief. All panelists shared the view that the UPC crunch time has now arrived. The first oral hearings have already taken place and the first decisions on the merits will be announced in the next few weeks. Of course, under the Rules of Procedure of the UPC, patentees have a head start. But: how often will this head be brought to the goal?

A factor that is often overlooked in this equation is UPC invalidity proceedings, and in particular their interplay with EPO opposition and national nullity proceedings. The second panel, moderated by Tobias Wuttke (Partner, BARDEHLE PAGENBERG, Munich office), addressed this interplay. It became apparent very quickly that, at least during the seven-year transitional period, European Bundle Patents are susceptible to numerous invalidity attacks: UPC counterclaims for revocation, UPC central revocation actions, EPO opposition proceedings and national invalidity proceedings. In summary: many bites at the apple? In fact, too many? On the other hand, does it really make sense to pursue multiple nullity attacks in parallel? In addition, when it comes to cost risks, inhouse budget restraints oftentimes dictate a conservative approach. This is true even under the rather generous UPC fee-shifting system. Of course, the loser pays. But who can guarantee in advance who the loser will be? And if the invalidity case was lost, has a gold-plated UPC patent just seen the light of day? The statistics presented by Tobias Kaufmann (Partner, BARDEHLE PAGENBERG, Munich office) made it clear that the transitional period may come to an end rather sooner than later: the uptake rate for Unitary Patents is close to 25%, while the opt-out rate is declining and now far below 50%.

However, the EPO and the UPC are set to operate in parallel in the future, with recent case law confirming that patentees are dealing with two independent systems. This independency raises serious problems for patentees in aligning their defense strategies, since the UPC apparently entertains a stringent approach when it comes to auxiliary requests. Such requests are crucial for the outcome of most patent litigation cases, as they mirror the thin line where a patent is valid and still infringed.

In his closing remarks, Mathieu Klos expressed what every attendee felt: let’s get together next year again! We look forward to meeting you in Düsseldorf!

If you would also like to run with the UPC, please feel free to contact us at upc@bardehle.de.