JUVE Patent brings you the latest news on the development of the UPC, as well as an overview of our previous coverage on the most important stages in the creation of the first European civil court.
November 2023
Freshfields takes over defence of Kodak against FujiFilm
Three weeks ago it became known that FujiFilm had sued its US competitor Kodak at the local divisions in Mannheim and Düsseldorf for infringement of three patents for an off-set printing technique. Now Freshfields Bruckhaus Deringer and Vossius & Partner have taken over the defence of Kodak. According to the UPC case search, Freshfields partners Wolrad Prinz zu Waldeck und Pyrmont and Kilian Seidel are representing Kodak in the Düsseldorf proceedings. Partner Nina Bayerl and associates Elena Hennecke and Caroline Horstmann are acting for the company in the two Mannheim proceedings. A patent attorney team from Vossius & Partner consisting of Natalia Berryman and Ursula Schnackenbeck is providing technical support for Kodak in all three proceedings. Vossius & Partner has been filing patent applications for Kodak in Europe for years. However, the firm's own litigation team was not involved this time. FujiFilm filed the three lawsuits with the UPC at the end of October with the help of a Hoyng ROKH Monegier team led by Tobias Hahn and Lars Baum.
UPC Court of Appeal has opportunity to aid case transparency
The UPC Court of Appeal in Luxembourg could now establish a uniform line on the question of which documents in a UPC case will, in the future, be publicly accessible. Last week, Ocado lodged an appeal against a decision by the Nordic-Baltic Division (case ID: UPC_CoA_407/2023 or App_584588/2023). So far, the appeal is only available in the UPC's CMS system, as JUVE Patent learnt from several sources. Previously, the UPC court in Stockholm had granted an applicant access to the statement of claim in a lawsuit between Ocado and AutoStore). Rule 262 1(b) of the UPC Rules of Procedure is the basis for this legal issue. Although the two companies have now settled their global dispute over robot-assisted automation systems for warehouses, the UPC continues to write legal history in the case due to the request of an unknown applicant for access to the litigation documents. This is because the Munich central division and, according to reports, the local division, had not granted such far-reaching access to trial documents in other cases. It is currently not known when the Court of Appeal will decide on this important issue. The decision is also important given the ongoing discussion about the court's transparency.
October 2023
Fujifilm and Hoyng ROKH Monegier take action against Kodak at the UPC
Photo technology manufacturer Fujifilm has sued competitor Kodak at the Düsseldorf and Mannheim UPC local divisions. In Mannheim, Fujifilm is seeking infringement of EP 35 11 174 and EP 34 76 616 (case IDs: ACT_579338/2023 and ACT_578818/2023). At their core, the two lawsuits revolve around the surfaces of offset printing plates. The two Mannheim judges, Peter Tochtermann and Holger Kircher, alongside Danish local division judge Peter Agergaard, form the panel in both cases. In Düsseldorf, Ronny Thomas and Berenice Thom, alongside Rute Lopes - the judge of Lisbon’s local division - are dealing with the chemical components for the printing plates (case ID: ACT_578607/2023). Here, Fujifilm sued for infringement of EP 35 94 009. The two German local division will hear all three cases in English, and the dispute is the first major UPC proceeding in Germany without the participation of the Munich local division. The Bavarian capital currently has the most UPC proceedings of all local divisions. An international team from Hoyng ROKH Monegier filed the lawsuits for Fujifilm. Düsseldorf partners Tobias Hahn and Lars Baum lead the team, which also includes an Amsterdam team led by partner Theo Blomme, as well as a team led by Amandine Métier from Paris. Both the Amsterdam and Düsseldorf offices have a long-standing relationship with Fujifilm. Hoffmann Eitle had previously filed the patents-in-suit. Kodak's representatives are not yet known. Both companies have so far only very rarely been present in patent proceedings in Germany.
UPC Nordic-Baltic division grants access to case documents
There is disagreement among the divisions of the UPC Court of First Instance as to the extent to which documents in proceedings should be accessible to third parties. However, the Nordic-Baltic Regional Division in Stockholm has granted an applicant access to the statement of claim in a lawsuit filed in the now-settled case by Ocado against AutoStore (case ID UPC_ CFI_11/2023). The applicant, who is not publicly known, had requested to see the statement of claim on the basis of Rule 262 1(b) of the UPC Rules of Procedure. Prior to the UPC’s launch, intense debate arose regarding the extent to which the UPC's basic transparency requirement extends to litigation documents. The Nordic-Baltic Division’s judges now ruled that if a person applies for access to pleadings or evidence under Rule 262.1(b), the application shall be approved unless it is necessary to keep the information confidential. In late September, the Central Division Munich had ruled differently on a similar issue in the dispute between Astellas Pharma and Healios, Riken and Osaka University, denying third-party access to documents from the written proceedings (case ID: UPC_CFI_75/2023). An appeal is possible in both ruling and is considered likely due to high public interest.
Long awaited: UPC publishes judgments
For the first time, the UPC has made its decisions publicly accessible. The court has set up the 'Decisions and Orders' tab on its website specifically for this purpose. The court's declared commitment to make decisions transparent has long ignited discussions among users. In 2022 a provisional version of the Rules of Procedure caused heated debate; an amendment to rule 262 aimed to harmonise the UPC Rules of Procedure with the General Data Protection Regulation. Many users feared the UPC would not publish all judgments and orders as planned. The Administrative Committee ultimately withdrew this amendment. The UPC has now fulfilled its obligation. So far, the website shows mainly orders of the court divisions. Among the 56 publications so far, there is only one decision: the PI decision concerning 10x Genomics and NanoString Technologies.
September 2023
EPO receives over 10,000 requests for patents with unitary effect
As of 26 September, the EPO has received 10,050 requests for European patents to assume unitary effect. Of these, 9,709 Unitary Patents have been registered, 331 requests are still pending, eleven have been withdrawn and one rejected. These figures are shown by the EPO's Unitary Patent dashboard, which provides real-time data on requests and registrations. The dashboard can be filtered according to country of origin, technology type, and language, which shows that the rejected unitary patent request was in the field of health with French as the procedural language. Of the registered Unitary Patents, the majority (20.5%, or 1,988 patents) are in infrastructure and mechanics, with 19.5% (1,894 patents) in materials and production. 18.8%, or 1,829 are in health. Of the 331 pending requests, 23% (76 patents) are in materials and production, 20.2% (67 patents) are in health and 16% (53 patents) are in infrastructure and mechanics. Of the 10,050 requests overall, the most popular procedural language is English with 71.5% (7,189 patents), followed by German with 21.6% (2,171 patents) and thirdly French with 6.9% (690 patents).
First major UPC hearing between 10x Genomics and NanoString over PI
The first UPC hearing at the Munich local division, between 10x Genomics and NanoString, got off to a late start due to a technical error. The case management system sent the parties the wrong time. The two-day trial was conducted by presiding judge Matthias Zigann, member judges Tobias Pichlmaier and András Kupecz, and technical judge Eric Enderlin. The subject of proceedings was a PI for EP 4 108 782. In addition, a second PI case is pending at the division concerning EP 2 794 928. Both patents protect a spatial profiling technology. The judges intend to announce their decision on the first hearing directly after the hearing in the second case, scheduled for 19 September. The dispute was already heard at German national courts. There are also ongoing disputes at the EPO and in the US. 10x Genomics is represented in the proceedings by Bardehle Pagenberg, with the Munich team led by lawyer Tilman Müller-Stoy. The patent attorneys were Tobias Wuttke and Axel Berger. Bird & Bird lawyer Oliver Jüngst represented NanoString Technologies, alongside patent attorney Daniela Kinkeldey.
Bristows opens office in Dublin
UK IP firm Bristows has now opened an office in Dublin with a view to better serving clients at the UPC. In March, Bristows partner Myles Jelf told JUVE Patent the firm intended to open an office in Dublin in the coming months and was in the final planning stages. UK partner Gregory Bacon is admitted to practice in Ireland, with a number of Bristows’ patent lawyers set to follow suit, including Myles Jelf and Brian Cordery.
July 2023
First UPC case filed at The Hague local division
The Hague’s local UPC division in the Netherlands has received its first infringement case, after SME Plant-e launched an attack against a Spanish competitor with the trade name Bioo (registered under legal entity Arkyne Technologies S.L.). Plant-e’s technology, which can generate electricity for lighting and sensors, is protected by EP 2 137 782 B1. Currently, EP 782 is valid across Belgium, Germany, France, Ireland, Italy, Luxembourg, Spain, the Netherlands and in the UK. In filing the case at the UPC on 12 July, Plant-e is hoping to enforce the patent across Europe. A mixed team from the Dutch and German offices of Simmons & Simmons is leading for the plaintiff, which is a new client for the firm, but JUVE Patent is currently unaware who is representing Bioo.
June 2023
UPC Administrative Committee publishes allocation of competencies
Today the UPC Administrative Committee published its decision on establishing Milan as the third central division seat and the allocation of competencies between the three seats. The Milan section will be responsible for human necessities patents, excluding supplementary protection certificates. The Munich section will be responsible for patents concerning chemistry and metallurgy (excluding supplementary protection certificates), as well as mechanical engineering, lighting, heating, weapons and blasting. The Paris section will be be responsible for patents on performing operations, transporting, textiles, paper, fixed constructions, physics, electricity and supplementary protection certificates.
UPC Administrative Committee approves Milan as third central division
According to a press release from the Italian Ministry of Foreign Affairs, the UPC Administrative Committee has unanimously decided to allow Milan to host the third seat of the UPC’s central division. This was the outcome of an Administrative Committee meeting yesterday, which comes after months of negotiations between the Lombardy capital and the other two central division seats, Munich and Paris. The Italian government hopes to have the third central division location up and running within the year – thus, barring an intervention, the Milan third section will likely open its doors before the end of June 2024. In a UPC Administrative Committee meeting on 2 June, Italy, France and Germany proposed that a central division in Milan be competent for IPC section A patents (human necessities), but this is yet to be announced.
The Unified Patent Court has confirmed that three technically qualified judges resigned from their positions, prior to the start of the court’s launch. While Grégoire Desrousseaux, dual-qualified litigation partner at French market-leading firm August Debouzy, had announced his resignation as TQJ via LinkedIn, the resignations of Finnish judge Kirsikka Etuaho and German judge Roman Maksymiw are only now public. With the UPC recently publishing the final version of its Code of Conduct, which clarified a stricter position on managing potential conflict between the judicial roles, and the patent attorneys hired to fill them, it is likely that this prompted the resignations –Desrousseaux confirmed as much on his public statement. It remains to be seen whether any further technically qualified judges will follow suit. The UPC has also confirmed, as reported by JUVE Patent last month, that Danish judge Peter Agergaard is now a legally qualified judge at the local division Copenhagen, while former Pinsent Masons partner – and former technically qualified judge – András Kupecz, while Dutch, will work as a legally qualified judge at the Munich central division. François Thomas will sit on the central division seat in Paris.
Italy, France and Germany propose solution for allocation of competencies
In the UPC Administrative Committee meeting on 2 June, Italy, France and Germany proposed a solution regarding the allocation of competencies originally intended for the London central division. According to the UPC website, the countries propose that a central division in Milan be competent for IPC section A patents (human necessities), the Munich division be competent for IPC section C patents (chemistry, metallurgy) and the Paris division for SPCs from section A and C patents. Member states are due to make a final decision during the next meeting on 26 June. The Italian government hopes to have the third central division up and running within the year, however this first requires contracting member states to decide on an amendment to the current UPC treaty. Until then, according to a decision by the UPC Presidium from 8 May, the Paris division shall be responsible for IPC section A patents, while the Munich division with be responsible for IPC section C patents.
Milan local division will offer English as alternative language
The Italian government has apparently also agreed to allow the local division in Milan to offer proceedings in English as well as Italian. This is shown today in an overview of the procedural languages of the individual court sections on the UPC website. Yesterday, it was announced that the local divisions in Germany and France will also offer English proceedings. According to JUVE Patent sources, the governments of the three countries had agreed this in advance. Thus, with the addition of Italy, all court locations will now offer English as well as the national language. In terms of diversity, the local division in Brussels goes the furthest, offering proceedings in Dutch, French, German and English. The first three languages are the official languages in Belgium.
UPC French and German local chambers to offer English as alternative language
Germany and France have apparently decided to offer English as an alternative language of proceedings, alongside German and French. This is shown in an overview of the procedural languages of the individual court sections on the UPC website. The local chambers in Düsseldorf, Hamburg, Mannheim, Munich and Paris are affected. A solution to the question of whether the three large UPC countries France, Germany and Italy will allow their local chambers to offer UPC proceedings in English was already hinted at on Tuesday at the UPC opening ceremony in Luxembourg. Several people with close contacts to the UPC reported that Germany, France and Italy had found a common solution to the language issue. However, according to the UPC overview, Milan continues to offer only Italian as a procedural language. It is currently unclear whether Italy continues to reject this in principle or whether there are only difficulties in implementation. The decision means that proceedings in English are now possible at all divisions of the Central Court, with the exception of Milan. The Court of Appeal will hear cases in the language that was used in proceedings before the Court of First Instance of that case. English is also the administrative language of the court.
Unified Patent Court finally open for business
After many years of intense discussion, today the Unified Patent Court is finally open for business. On Tuesday 30 May, the court was inaugurated in Luxembourg, welcoming in a new phase of European patent litigation for 17 ratified EU member states. From today at 9am, the court CMS will allow for a full spectrum of proceedings, according to the UPCA and court's Rules of Procedure. The UPC’s Court of Appeal is located in Luxembourg, while its Court of First Instance will be spread between three central locations including Paris and Munich, as well as among several local divisions. The court has overcome many hurdles and negotiations to reach the current phase, including political discussions, constitutional complaints, technical issues and discussions around the judiciary. It remains to be seen how it develops over the next weeks and months.
May 2023
UPC to allow opt-outs via hard copy if CMS fails
The UPC has prepared special measures for opt-outs during the final days of the sunrise period. According to the website, users will be permitted to apply for opt-outs via hard copy in the event that the CMS system ceases to function. A sharp rise in opt-outs as the sunrise period draws to a close has put the CMS system under particular pressure and has thus led the UPC to implement a backup plan to ensure opt-outs remain possible were the system to fail. The website states that, if such an event occurs, users may temporarily submit opt-outs via a USB stick. However, the UPC must first officially establish and confirm the failure of the CMS system before such measures are allowed. If this were to occur, users must follow a strict guideline detailed on the website in order for a hard-copy opt-out to be valid.
So far no English UPC proceedings planned in France, Italy and Germany
The UPC has now published an overview of the languages of UPC proceedings at the various local divisions. Vienna, Brussels, Copenhagen, Helsinki, The Hague, Lisbon, Lubiljana and Stockholm will offer English as an alternative language. Currently, the divisions in Paris, Milan and Germany only list the respective local language. However, the website states "additional languages may be designated under Article 49(2) UPCA- the table will be updated accordingly", thus indicating that this may change. There has been much speculation in the patent community as to whether especially the divisions in Germany will and should offer English as a second language. But so far the German government seems hesitant to make a decision in this regard.
UPC warns users to finalise ‘massive’ opt-outs by 30 May
With less than two weeks until it launches, the UPC has issued a set of instructions for external users to prepare for the CMS Entry into Force. At the end of May the CMS environment will be temporarily offline to allow for various upgrades and extension of functionalities. The most significant notification pertains to opt-outs. From 9am CET on 31 May, it will not be possible for parties to conduct massive opt-outs via API (application programming interface). Users must send their final batches of opt-outs by 30 May 4pm CET. Any ongoing opt-outs will be stored and processed as of June 1, at which time new opt-outs will resume.
UPC Presidium designates IPC (A) and (C) patent classes to Paris and Munich
The UPC Presidium has assigned pending actions related to patents in IPC section (A) – human necessities – to the Paris Central Division, while it will assign actions related to patents in IPC section (C) – chemistry, metallurgy – to the Munich Central Division. Earlier in 2023, discrepancies had emerged regarding whether IPC classes A and C – which the Agreement on a Unified Patent Court (UPCA) had previously assigned to London – would automatically transfer to a new third central division. Many experts expected this to be Milan, but with two weeks until the UPC opens its doors, negotiations remain ongoing. JUVE Patent sources say they do not believe the latest development will negatively impact ongoing negotiations concerning Milan as the third seat of the central division, although the question as to whether both the Presidium or the Administrative Council have the power to reassign divisions has arisen. According to the UPCA, Paris already has jurisdiction over cases involving textiles and paper, fixed constructions, physics, and electricity. Previously, the agreement had allocated the Munich section of the central division mechanical engineering, lighting, heating, weapons, and blasting.
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