Untangling the UPC: What in-house patent experts need to know now

This report is a follow-up on a joint IP event by BARDEHLE PAGENBERG in cooperation with JUVE PATENT. It took place as a hybrid event at the Munich office of BARDEHLE PAGENBERG on June 20, 2023 and was entitled “Untangling the UPC: What in-house patent experts need to know now”.

The event, addressed to in-house IP counsel who deal with litigation in Europe across a wide range of industries, attracted about 60 participants who attended in person in Munich and over 200 online viewers from 27 different countries. It provided a unique opportunity to evaluate how the system started, discuss the initial facts and figures, share first experiences made in UPC cases, and discuss how the UPC will change European and global patent litigation.

The program included an introduction by Mathieu Klos of JUVE PATENT, a keynote presentation by Prof. Dr. Matthias Leistner, LL.M. (Cambridge) of the Munich University Ludwig-Maximilians-Universität on the question of how the UPC and the CJEU will harmonize European patent law, and two panel discussions, one on observations and predictions three weeks into the UPC, the other on Franco-German UPC litigation strategies, followed by a question-and-answer session.

During the keynote it became clear that the institutional co-operation of the CJEU and the UPC will – over time – provide unity and predictability of patent law, achieve quick and efficient decision-making, and provide high-quality court decisions, which are balanced and in line with overall innovation policies. Prof. Leistner showed expected key areas of influence of the CJEU in UPC proceedings, such as the

• Conformance of the UPC Court of Appeal case law with existing CJEU case law
• Application of Union law by the UPC relating e.g. to the Enforcement Directive, the Biotech Directive, the Brussels I and Rome I Regulations as well as to an evaluative comparative law analysis of Member States’ laws and case law.

Concluding, Prof. Leistner shared his optimistic hope for a high-quality system of mutual co-operation and checks and balances between the CJEU and the UPC while keeping in mind not only unification and the need for legal certainty but also efficiency and timely decision-making. We are happy to share his presentation slides with you.

The first panel on observations and predictions three weeks into the UPC, moderated by Prof. Dr. Tilman Müller-Stoy, partner and patent litigator at BARDEHLE PAGENBERG, included two of the front runners in filing UPC cases: Eric Whitaker, Chief Legal Counsel of 10x Genomics, who filed two applications for provisional measures and one main action on June 1, and Arie Tol, Principal Licensing Counsel at Philips Intellectual Property & Standards, who filed two main actions with the UPC on June 1.

Helene Jay, Sr. Director Audio Programs of Via Licensing Alliance shared a patent pool’s perspective on the UPC and Tilman Müller, partner and patent litigator at BARDEHLE PAGENBERG, contributed his experience of filing the first actions for his client on June 1.

The facts and figures shared by the first panel included:

• Of 20 cases pending at the UPC at the time of the event, 19 had been filed immediately on June 1.
• Seven of the 20 current cases are being represented by BARDEHLE PAGENBERG (six offensive and one defensive representation), among them the very first ones filed with the Munich and Hamburg Local Divisions.
• Of the 20 cases, two are applications for provisional measures, 14 are main infringement actions, one is an application for evidentiary measures and three are central revocation actions.
• The top UPC divisions are the Munich Local Division, with eight cases, and the Munich Central Division, with three cases. No cases have been filed with the Paris, The Hague or Mannheim Local Divisions, yet, which was a bit of a surprise.
• The top technologies are life sciences (eight cases) and High Tech (five cases).
• One SME vs. SME case is pending at the Duesseldorf Local Division.
• The values of the cases range in the broad spectrum from EUR 500K to 100m.

Both Eric Whitaker of 10x Genomics and Arie Tol of Philips shared reasons why they opted for trying out the new system from day one. Some of the key reasons were the

• Proven track record of many of the UPC judges in their national systems and
• Chance of shaping the new system from the beginning,
• Meaningful relief with broad geographical impact,
• Speed,
• Expected high quality of decisions.

The second panel on Franco-German UPC litigation strategies, moderated by Dr. Anna Giedke, partner and patent litigator at BARDEHLE PAGENBERG, consisted of Miguel Soriano, Patent Licensing & Litigation Manager – European Patent Attorney & European Patent Litigator at JT International SA, and BARDEHLE PAGENBERG partners and patent litigators Clément Jaffray, Dr. Tobias Wuttke and Tilman Müller-Stoy. The panel discussed scenarios where it may make sense to take action before the UPC and national courts in parallel, particularly in terms of evidence gathering or hybrid litigation strategies. Especially, recommended training measures to prepare for French-style saisie contrefacon attacks in France as well as before the UPC were discussed.

A common theme of all discussions was embracing the new system, using and shaping it in a balanced and collaborative way and helping create what will probably become the epicenter of global patent litigation. BARDEHLE PAGENBERG is proud to be part of this venture, not only as a pioneer but as the front runner of the early days. If you would also like to run with the UPC, please feel free to contact us at upc@bardehle.de.