European patents with unitary effect - they are coming, only when and in what form? WR informs you in detail about the current status in the prosecution process, about contested patent proceedings before the new Unified Patent Court (UPC) and provides answers to your questions.
The linked presentation shows the coming European "Unitary Patent System" in its legal basis, structures and impact on the enforcement of patents in Europe. In addition to discussing the advantages and disadvantages of the new court system, special attention is paid to the regulation and practical handling of “opt-outs”. An “opt-out” can already ensure during the "sunrise period” that classic European patents do not (also) fall under the jurisdiction of the new Unified Patent Court. Strategic considerations also included in the presentation show decision factors that are relevant for a decision for or against an “opt-out”.
This section provides the most important legal regulations, agreements and rules being relevant for enacting, implementing and executing the new Unitary Patent System. Some of the provisions are not finally agreed and are still in draft version.
December 4, 2023
Security for UK Claimant
By Dr Michael Wallinger
Report on the decisions of the Central Division (Section Munich) of 4 and 30 October 2023 UPC_CFI_252/2023
Details of the procedure:
Claimant: NanoString Technologies Europe Limited, Bristol, UK
Defendant: President and Fellows of Harvard College
Patent at issue EP 2 794 928 B1 (EP' 928) entitled "Compositions and Methods for Analyte Detection "
Summary of Facts
On 25 August 2022 NanoString Technologies Germany GmbH brought a revocation action against the German national part of EP ‘928 to the German Federal Patent Court. The oral hearing in said action is scheduled for 7 May 2024.
On 27 July 2023, Claimant NanoString Europe UK, brought a revocation action against EP ‘928 to the Central Division Section Munich, requesting revocation of the Patent for the territory of Germany, France, and the Netherlands.
Jurisdiction – Order of 4 October 2023
On 28 August 2023, the Defendant filed a preliminary objection including a request to have the revocation action dismissed as inadmissible in so far as it relates to the German part of EP ‘928, and an application for security for costs pursuant to Rule 158 RoP. In the alternative, it is requested that the action for revocation be stayed in so far as it relates to the German part of EP ‘928 until a final decision has been given by the German Court. The Defendant bases this on Articles 29 and 30 of Regulation (EU) No 1215/2012 – “Brussels I recast”. The Claimant disagrees and argues that the question of jurisdiction cannot be discussed in the context of a preliminary objection.
The Court finds that the parties agree that the UPC has jurisdiction over at least the non-German parts of EP' 928 and therefore concludes that this preliminary objection should be dealt with in the main proceedings. By that time, the German proceedings would probably have taken place, and the results of those proceedings could be taken into account in answering the question of jurisdiction.
Deposit of security – Order of 30 October 2023
According to Rule 158 (1) RoP, the Court "may at any time during proceedings, following a reasoned request by one party, …order the other party to provide … adequate security for the legal costs and other expenses incurred…”
The Court determined in the preliminary order, discussed above, that such a request should not be clarified by way of a preliminary objection.
According to Rule 9 of the Rules of Procedure, the Court "may at any stage of the proceedings, of its own motion or on a reasoned request by a party... make a procedural order…..”. The Court has started such a workflow and thus set the deadlines for the parties' submissions in accordance with Rule 158.2 of the RoP (right to be heard before a security is ordered).
With reference to the business figures of the Claimant's group of companies, the Defendant argues that it is doubtful whether the Claimant would be able to bear the legal costs if it lost the proceedings. The interim injunction issued by the Munich Local Chamber exacerbates the Claimant's financial problems. Furthermore, the applicant's domicile in the United Kingdom makes it more difficult to enforce a judgement of the UPC regarding costs.
The Claimant counters this. The group of companies has a long-standing presence and stability and sufficient cash resources and is therefore in a position to pay the legal costs if ordered to do so. Furthermore, the group of companies has already conducted several legal proceedings against the Defendant and has fulfilled all of its financial obligations arising from these on time. Moreover, as a British company, despite Brexit, it was not in a remote legal area in which legal costs could not be enforced.
In its decision, the Court first cites decisions of the local chambers in Munich and Helsinki and states in agreement with them that it has a discretionary power to set a security here. The relevant authorisation in Art. 69 (4) UPCA, which refers to "in particular in the cases referred to in Articles 59-62", is not limited to the proceedings referred to in these articles because of the term "in particular".
According to the Court, it may be necessary to order the provision of security if there is concern that:
When ordering the provision of security, a balance must be struck, according to the Court, between protecting the Defendant on the one hand and protecting the Claimant from an unreasonable burden on the other. Here, the Court refers to the Charter of Fundamental Rights of the EU. According to Art. 47 Para. 2 of the Charter, every person has the right "to have his case heard by an independent and impartial tribunal previously established by law, in a fair hearing, in public and within a reasonable time". This requirement may be an obstacle to the imposition of a security. The Court refers to ECJ decisions C-439/14 and C-488/14, in which restrictions to this right are subject to strict limitations.
The Applicant, in this case the Defendant, must first substantiate the facts on which the application is based. Once this has been done, it is up to the Respondent, in this case the Claimant, to object to this in a substantiated manner, especially since knowledge of the Respondent's own financial situation lies within the sphere of the Respondent.
The fact that the Respondent is domiciled in the United Kingdom plays a particular role in the assessment. The Court notes that the United Kingdom no longer recognises Regulation (EU) No 1215/2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters and is not a member of the Lugano Convention or a similar international agreement. Therefore, according to the Court, there is undoubtedly an additional procedural burden and uncertainty on the party seeking to enforce a UPC costs judgement in the UK. This argues for the imposition of a security.
Furthermore, in the proceedings for interim relief in UPC CDI 2/2023, the respondents, who are part of the Respondent'sgroup of companies, have argued that the grant of the order actually made by the decision of 19 September 2023 would "threaten the existence" of the group. This does indeed raise concerns as to whether the Group would be able to raise the necessary funds in the event of a negative decision on the applicant's costs. Moreover, the Respondentdid not provide detailed information on its financial situation and did not prove that it could bear the corresponding costs. The assessment therefore led to an order that the Respondentprovide security for the costs. The Claimant's domicile in the United Kingdom plays a special role in the assessment. The Court notes that the United Kingdom no longer recognises Regulation (EU) No 1215/2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters and is not a party to the Lugano Convention or a similar international agreement. Therefore, according to the Court, there is undoubtedly an additional procedural complication and uncertainty for a party wishing to enforce a UPC costs order in the UK. This argues in favour of the imposition of a security.
Furthermore, the Respondents belonging to the Respondent'sgroup of companies have argued in the proceedings for the order for interim measures UPC CDI 2/2023 that the issuance of the order actually made by decision of 19 September 2023 would "threaten the existence" of the group. This does indeed give rise to concerns as to whether the Group would be able to raise the necessary funds in the event of a negative decision on costs for the applicant. In addition, the Claimant did not provide detailed information about its financial situation and did not prove that it could bear the corresponding costs. The assessment therefore led to the Respondentbeing ordered to provide security for the costs.
The Defendant proposes to determine the security deposit according to the table of the Administrative Council for the upper limits of reimbursable costs. The Claimant has not commented on this. With the amount in dispute here of € 7.5 million, this upper limit would be € 600,000. As this is the maximum of the recoverable costs, the Court considers it to be "fair, reasonable and proportionate" to impose a security deposit of € 300,000 on the Claimant. This security can be provided by paying it into the UPC's designated account or by depositing a guarantee from a "significant EU bank" that is under the "direct supervision" of the European Central Bank. Leave for appeal for both parties is granted.
The Court's reasoning is convincing and follows the previous pragmatic application of the Rules of Procedure. If a party, or in this case several companies in a group of companies, argue in proceedings before the UPC itself that the issuance of an interim injunction against them would threaten their existence, it is difficult for the Court to assume a solid financial basis without corresponding evidence from the Claimant once the injunction has been issued.
Since the UPCA does not require the claimant to prove a legal interest in having the patent revoked, it appears to be very tempting for some corporations to have the revocation action brought by a company without assets, which is sometimes set up solely for this purpose. The financial risk is then shifted unilaterally to the patent holder. This can be countered by an appropriate security.
November 25, 2023
Disappointing Decision by the Paris Central Chamber
By Dr Michael Wallinger
Report on the Decision of the Paris Central Chamber of 13 November 2023 UPC_CFI_255/2023
Details of the proceedings: Preliminary objection in relation to the admissibility of the action for revocation
Applicant and Patent Owner: Edwards Lifesciences Corporation, California, USA,
Respondent and Claimant in revocation proceedings: Meril Italy srl, Milano, Italy
Patent at issue EP 3 646 825
Facts and requests: On 4 August 2023, the Respondent, an Italian subsidiary of Meril India, filed a revocation action against the patent in suit with the Central Chamber in Paris. The Applicant had previously filed an infringement action against Meril India and Meril Germany with the Local Chamber in Munich on 1 June 2023, which is pending there under file number UPC_CFI_15/2023.
As part of a preliminary objection, the Applicant requests that the action be dismissed as inadmissible and, alternatively, that the proceedings be stayed until the Defendants in the Munich proceedings have submitted their defence and, if applicable, the revocation counterclaim. In the further alternative, the time limit for responding to the action for revocation should be extended by one month.
The Applicant submits (and probably also proves) that Meril Italy was only founded in March 2023, that all employees there are also employees of Meril India, that the stated registered office is the address of an accounting firm and that no business activities are carried out.
The Respondent requests that the oral hearing scheduled for 26 October 2023 be postponed to allow it to respond in writing to the Applicant’s written submission of 25 October 2023 or, in the alternative, that this submission and the arguments contained therein be disregarded.
Order: The court rejects the preliminary objection and the application for a security deposit for the legal costs.
Reasons for the Order
Postponement of the Oral Hearing
The application to postpone the oral hearing is rejected. According to the court, the possibility of submitting written submissions up to the day before the hearing serves to prepare the hearing regarding the points to be discussed and thus contributes to the efficient conduct of the hearing. In addition, the scope of the preliminary objection is determined by the original application, and nothing may be added to it, neither further reasons nor further facts. No new evidence may be submitted either, unless it concerns facts that arose after the preliminary objection was submitted.
Definition of the Term "the same parties" in Art. 33 (4) UPCA - Literal Meaning
The Applicant argues that due to the connection between Meril Italy and Meril India, the revocation action may only be brought as a revocation counterclaim before the Munich Local Division pursuant to Art. 33(4) UPCA. It must therefore be determined whether Meril Italy is the same party as Meril India or Meril Germany within the meaning of this provision.
According to Art. 46 (5) UPCA, any natural or legal person authorised to bring proceedings under the national law applicable to that person may be a party. The court then first examines whether Meril Italy is an independent party under Italian law and the case law of the Corte Suprema di Cassazione, the highest court of ordinary jurisdiction in Italy, and answers in the affirmative. The fact that the ECJ, e.g. in the ECJ decision of 10 September 2009, C-97/08, in the context of competition law, considers companies affiliated with each other under corporate law as an economic unit and attributes the unlawful conduct of a subsidiary to the parent company does not mean, in the opinion of the court, that the subsidiary does not have its own legal personality. Meril Italy and Meril India or Meril Germany were therefore not to be regarded as the same party.
According to the Applicant, the term "the same parties" in the UPCA should be interpreted broadly in light of this Regulation and the judgment of the ECJ of 19 May 1998 in Case C-351/96.
The court rejects this argument and justifies this with fundamental considerations regarding the division of jurisdiction for different types of proceedings in the UPCA. The provision according to which jurisdiction for an action for revocation brought after the filing of an infringement action is assigned to the respective local division constitutes an exception to the principle that the central division has jurisdiction to determine the legal validity of a patent. As an exception, this provision must be interpreted narrowly. Meril Italy should therefore be regarded as an independent party.
The court recognised that there was a "connection" between the two companies, but this was not sufficient to prove that there was an agreement between Meril India and Meril Italy that Meril Italy was acting in the interests of Meril India. The existing evidence was not sufficient to assume the existence of such an agreement. The fact that Meril Italy does not have its own business premises and does not carry out any business activities can be explained by the fact that the company was only founded in March 2023 and is still in a preparatory phase.
In this context, the court also refers to the decisions of the Enlarged Board of Appeal of the EPO G3/97 and G4/97, without, however, pointing out that the facts of the case there were completely different, as there was no link to any infringement proceedings filed earlier. There, the Enlarged Board of Appeal dealt with the question of whether the opposition of a straw man was admissible and answered in the affirmative, as long as the straw man was not acting, for example, on behalf of the patent proprietor.
Definition of the Term "the same parties" in Art. 33 (4) UPCA - The Argument Based on the Uniform Administration
According to the Applicant, there is a risk of contradictory decisions if Meril India and Meril Germany file a counterclaim for invalidity in the infringement proceedings. This is precisely what Art. 33 UPCA is intended to prevent. Furthermore, two chambers of the same court would then have to deal with the same legal issue, namely the validity of the patent in dispute. This would be regarded as an abusive use of the court.
The court does not consider this to be convincing and believes that contradictory decisions would be prevented by Rule 295.m RoP. This argument is surprising. Rule 295 lists 13 different grounds for staying proceedings, but the fact that a revocation action and a counterclaim for revocation are pending in parallel is not one of them, obviously because this should be excluded by Art. 33(4) UPCA. Rule 295 reads: "The court may stay the proceedings ... (m) in any other case where the proper administration of justice so requires". Why the court refers to Preamble 2 and 4 of the Rules of Procedure and the principles of proportionality, flexibility, fairness and equity mentioned therein in relation to this argument (Reasons No. 80) is not clear to the observer. The idea that this judgement could be fair does not occur to the observer.
Order of a Security Deposit
With regard to the application for an order to provide security, the court considers that the low share capital of € 10,000 and the Respondent's lack of business activities are no reason to assume that the Applicant will not be able to enforce its claim for reimbursement of costs. The court therefore rejects the application.
Criticism of the Judgement
The judgement departs from the previous pragmatic approach of the Court of First Instance and the Court of Appeal in interpreting the Rules of Procedure. It violates the case law of the ECJ and is logically incorrect.
The only substantial argument on which the court bases its affirmation of the admissibility of this revocation action is the argument that the provision under Art. 33(4) UPCA is to be interpreted narrowly as an exceptional provision. However, the court does not explain why this should be the case. It remains a mere assertion.
As is well known, the ECJ determined very early on how to proceed when interpreting legal norms. For example, in decision C 26/62, which deals with the interpretation of the EEC treaty, it is stated that, for the question of interpretation, "it is necessary to consider the spirit, the general scheme and the wording of those provisions".
Recital 6 of the UPCA states
CONSIDERING that the Unified Patent Court should be devised to ensure expeditious and high quality decisions, striking a fair balance between the interests of right holders and other parties and taking into account the need for proportionality and flexibility.
Art. 33(4) UPCA clearly serves, but is not limited to, the purpose of ensuring fast decisions. The Paris Chamber's proposal that the infringement court should stay the infringement proceedings in the event of an invalidity action pending before the central division is diametrically opposed to this legal purpose. This results in the problems that arise from the separation or bifurcation principle in German law, and which sometimes delay decisions on infringement issues for many years. This is precisely what the UPC and its streamlined Rules of Procedure are intended to prevent. However, this is not the only purpose of the law. The simultaneous treatment of infringement issues and revocation objections is also intended to prevent the so-called Angora cat paradox, namely that the patent proprietor interprets the patent narrowly in opposition and revocation proceedings, while interpreting the patent broadly in infringement proceedings, with the result that embodiments are sometimes included in the scope of protection that would have been classified as unpatentable in opposition or revocation proceedings.
The decision also contradicts the case law of the ECJ, which is also relevant for the UPC according to Art. 20 and 21 UPCA.
In the judgement of the ECJ in case C 351/96 cited by the Paris Chamber, the French Cour de Cassation referred a question to the ECJ on the interpretation of Art. 21 of the Brussels I Convention. This concerns the understanding of the term "the same parties". In the case decided by the ECJ, the parties were, on the one hand, the insurer of a ship suing the owner of the cargo and its insurer and, on the other hand, the owner of the cargo and its insurer suing the owner of the ship and its charterer. In this case, the ECJ assumes that the parties are the same if the interests of the ship's insurer and the policyholder on the one hand and those of the ship's owner and charterer on the other are identical and inseparable. The ECJ therefore does not answer the question according to whether the parties are legally different – this was undisputed – but according to whether the interests are inextricably linked. The fact that the interests of the parent company Meril india and its wholly owned subsidiary Meril Italy are inextricably linked in the present case is beyond any doubt.
In decision C 97/08, the ECJ stated in point 62 of the grounds “that it is sufficient for the Commission to show that the entire capital of a subsidiary is held by the parent company in order to conclude that the parent company exercises decisive influence over its commercial policy”. Contrary to the opinion of the Paris Chamber, no evidence is therefore required to assume that Meril Italy is acting on behalf of Meril India.
October 2, 2023
Local Division Düsseldorf orders Provisional Measures in ex parte Proceedings
Local Division Düsseldorf UPC_CFI_177/2023 Order of 22 June 2023
myStromer AG, CH vs. Revolt Zycling AG CH Patent EP 2 546 134 B1
Part 3 of the RoP UPC deals with provisional measures. Pursuant to Rule 205, provisional measures are dealt with by way of summary proceedings, which consist of:
“(a) a written procedure; and (b) an oral procedure, which may include an oral hearing of the parties or of one of the parties”.
Consequently, Rule 212 of the RoP UPC provides for provisional measures proceedings without hearing the defendant. According to Rule 212(1), this is the case “where delay would be likely to cause irreparable prejudice to the applicant“. According to Rule 206(3), the applicant must state the reasons why the defendant should not be heard.
Such a case had to be decided by the Local Division Düsseldorf with Presiding Judge Thomas, Presiding Judge Klepsch as legally qualified judge and legally qualified Judge Kupecz.
The patent in dispute, EP 2 546 134 B1, relates to a combination structure of a bicycle frame and a motor hub, i.e. the main components of an e-bike. The patent is a bundled patent and is in force in Germany, Switzerland, Italy, Liechtenstein and the Netherlands.
The contested embodiment was not yet available on the market but could be test ridden at the important bicycle trade fair EUROBIKE, which took place from 21 June 2023 to 25 June 2023. The contested embodiment was also inspected at the Swiss headquarters of the defendant at the request of the applicant on 19 June 2023. However, the substantive results of this inspection had not yet been released.
The patent proprietor unsuccessfully requested a cease-and-desist declaration from the defendant on 22 June 2023, and thereupon applied for provisional measures, which were granted on the same day.
The defendant had filed a protective letter under Rule 207, which was taken into account by the court when deciding on the application. The defendant claimed that the patent was not infringed, that it was invalid and that the patent rights had been exhausted.
The court granted the application and gave the following reasons for its decision:
The contested embodiment infringed the patent literally, and the defendant had not disputed this in any significant way, either out of court or in the protective letter. Further, the defendant did not present any relevant prior art.
The application was urgent within the meaning of Rule 209.2(b) in relation to the current trade fair EUROBIKE 2023. It was neither argued (this can only refer to the protective letter) nor evident that the applicant had knowledge of the detailed technical configuration of the contested embodiment before the trade fair.
The validity of the patent was confirmed to the required extent. The patent grant was published in 2015 and no opposition or action for revocation had been filed against the patent to date.
The order for provisional measures was necessary because the exhibition of the contested embodiment at this trade fair could lead to a loss of the applicant’s sales and market share that would be difficult to reverse.
Finally, the court set the Applicant a time limit, calculated under Rule 213.1, of not more than 31 calendar days or 20 working days, whichever is longer, to file the main action.
Thus, also under the UPC Rules of Procedure, it is possible, in relevant cases, to obtain an order for interim measures very quickly (here, on the same day as the application was received) without hearing the opponent.
It is questionable whether, for a defendant who is expecting an application for provisional measures, it is advantageous to file a protective letter under Rule 207. Rule 209.2(d) provides that, when the court, in the exercise of its discretion under Rule 209.1(a), considers whether to notify the defendant of the application, it must take into account “a protective letter filed by the defendant“. The court must “in particular consider summoning the parties to a hearing if the defendant has filed a relevant protective letter.“
There would therefore appear to be a benefit in filing a protective letter. However, experienced patent judges, such as those working in the Düsseldorf Local Division, very quickly recognise whether the submission in a protective letter regarding the lack of infringement, the lack of validity and, if applicable, the granting of a licence, etc. is plausible and whether it appears to be well-founded. If this is the case, the court will order an oral hearing on the basis of the protective letter. If this is not the case, the protective letter makes it easier for the court to order provisional measures without hearing the defendant as it has already been able to examine the defendant’s arguments.
The filing of a protective letter is thus only advisable if there are good arguments to challenge infringement and/or validity.
September 20, 2023
Second Oral Proceedings before the Munich Local Chamber of the UPC
On September 19, 2023, the second substantive hearing took place before the Munich Local Chamber of the UPC, confirming the overall positive impression that observers had gained in the first hearing on September 5 and 6, 2023 (see http://www.eplit.eu/first-substantive-hearing-before-the-upcs-local-division-munich/). Also in this case. the court was well prepared, asked specific questions to clarify the facts and legal issues, and gave the parties sufficient time to present their case. The hearing was conducted in German.
The parties facing each other were essentially the same as in the September 5 and 6 hearing (10x Genomics and NanoString), and the bench was composed of the same Judges Dr. M. Zigann, T. Pichlmaier (both DE) A. Kupecz (NL) and E. Enderlin (FR). The teams of attorneys from the law firms Bardehle Pagenberg and Bird & Bird, respectively, were also more or less the same. The patent-in-suit, EP 2 794 928 B1 (Patentee: President and Fellows of Harvard College) was from the same patent family as the patent asserted in the first proceedings and also concerns "compositions and methods for the detection of analytes".
While the patent discussed in the first hearing was a unitary patent, the patent asserted in these second proceedings is a “classic” EP bundle patent granted in 2019 for the DE, NL and FR parts are to be provisionally enforced in Germany, the Netherlands and France. Another peculiarity is that main proceedings had already been successfully conducted in Germany based on an action filed in spring 2022. The action was awarded by the district court and that judgment was provisionally enforced by the plaintiff. The appeal against this decision is pending. In addition, an action for revocation was filed against the patent in August 2022. On September 18, 2023 - i.e., one day before the oral proceedings - the applicant filed a main action also with the local chamber in Munich.
The proceedings again proceeded along the lines of known German proceedings for requesting an preliminary injunction. The Chairman introduced the facts of the case and the dispute and explained the issues on which the parties were to make submissions. The following main points were discussed:
Scope of the Requests
The Claimant did not assert the patent as granted, but rather the patent in a restricted version, as is readily possible under German procedural law. According to the legal opinion of the respondent, however, the patent can only be asserted in the granted version. Respondent referred to Art. 2 and 32 UPCA and to Rules 30 and 50 of the Rules of Procedure, which refer to the "granted patent". Therefore, the assertion of a restricted version before the UPC was not possible. This is also in accordance with the national procedural law in France.
One issue here was the understanding of a certain feature of the claim and a possible contradiction between the claim and the description.
The Claimant literally described the wording in the claim as a "lapse", which, however, could easily be corrected by way of interpretation. (as an observer, one has to think of the BGH decision "Rotorelemente" of May 12, 2015, Ref. X ZR 43/13, in which the BGH corrected the mixing-up of two terms in the claim by way of "benevolent interpretation" - according to one commentator).
As expected, the respondent disagreed and considered the correction of the feature to be a violation of Art. 123(3) EPC, as it would extend the scope of protection of the patent after grant. Nor was the correction offered an obvious error within the meaning of Rule 139 EPC.
In the Respondent’s view, not surprisingly, the patent is not valid. In particular, the deletion of alternative substances in the claim is an infringement of Art. 123(2) EPC, since this constitutes an inadmissible selection from two lists, according to the case law of the boards of appeal. (Based on this, e.g., in decision T 1150/15 - grounds 2.10 - the EPO Board of Appeal revoked patent EP 1 422 218 (which was the subject of the BGH decision "Raltegravir" of July 11, 2017, case no. X ZB 2/17 on the grant of a compulsory license). At the request of the Chairman, the Respondent had to explain this argument in more detail. Furthermore, the respondent briefly explained why the teaching of the patent had been obvious to the person skilled in the art.
The applicant - also unsurprisingly – viewed these matters differently.
Balancing the Parties‘ Interests
According to Art. 62(2) UPCA, the court "shall weigh" the interests of the parties "in its discretion, taking into account, in particular, the possible damages which might result to one of the parties, based on the rejection of the request". This wording is also found verbatim in Rule 211(3) of the Rules of Procedure. However, the same rule then states in para. 4 that the court will also take into account "unreasonable delay in applying for provisional measures".
In German proceedings on the issuance of a preliminary injunction for patent infringement, the Claimant must establish the actual claim (“Verfügungsanspruch”), but also the reason (“Verfügungsgrund”) for requesting preliminary injunction, in a credible manner. The “reason” for the injunction (which also requires a balancing of interests) includes the so-called "urgency", which, in the view of many patent litigation chambers in Germany, is considered to be forfeited if the applicant waits more than one month after knowing about the infringement before filing the Request..
In the present case, the Chamber did not indicate how it understood the term "unreasonable delay", but devoted a considerable part of the oral proceedings to this question.
It was discussed which standard is decisive for the assessment of the time factor (urgency) in the case of a bundled patent, the individual national parts of which, according to the respondent, are to be regarded as different patents. Is the country decisive, in which the Claimant waited the longest, or is it the country in which the Claimant has reacted the fastest, or is this to be considered differently from country to country?
The length of the main proceedings, which according to the UPCA should only take 12 to 15 months, also played a role in the discussion. Is it to be taken into account in the balancing of interests that - as the respondent has said - the main action was not filed until three months after filing the request for provisional measures and thus, as the respondent put it, three months “were given away”.
The Claimant discussed in detail the measures that were taken to establish infringement with certainty. The Claimant should not be expected to accept a costly and reputationally damaging defeat in the event of uncertain proof of infringement, simply because the proof of infringement was ultimately considered insufficient. With regard to the timeline, the Claimant stated that the distribution of market shares would be decided in the next few months, and that these could then no longer be changed for several years. Therefore, it would not be possible to wait for a decision on the merits.
During this discussion, a small dispute arose between the court and the Claimant concerning the admissibility of evidence according to Art. 53 EPCÜ. The respondent had partially contested the factual submissions of the Claimant with lack of knowledge (“Nichtwissen”), whereupon the representative of Claimant gave a lawyer's affidavit that it was correct. The presiding judge, however, pointed out that a lawyer’s affidavit was not listed as evidence in Art. 53 UPCA, to which the applicant countered that Art. 53 UPCA only mentioned evidence that is admissible "in particular" evidence and thus does not exclude a lawyer’s affidavit.
After a short preliminary deliberation of the court, the hearing was closed shortly before 13:00. A decision is to be announced on October 10, 2023.
Dr. Michael Wallinger
May 31, 2023
Tomorrow is the day! UPC to start June 1, 2023
The new unitary patent system will be available from tomorrow when the UPC Agreement (Agreement on a Unified Patent Court) comes into force. The Unified Patent Court begins its work on this day.
As always, our entitled representatives before the UPC are available to you for any advice related to this change.
February 17, 2023
BREAKING NEWS: Germany has completed ratification - the unitary patent gets real !
Today, the German government has deposited its instrument of ratification of the Agreement on a Unified Patent Court (UPCA) with the Council of the European Union. This means the new system is ready to start on June 1 of this year.
For more information, see today's communication from the Europen Patent Office: www.epo.org/news-events/news/2023/20230217.html
October 20, 2022 (updated on October 21, 2022)
Announcement of the UPC Judges
The Unified Patent Court ("UPC") has announced the appointment of the judges of the respective chambers of first instance and the Court of Appeal. From a German point of view, many patent judges known from the German patent litigation chambers and patent senates as well as from the German Federal Patent Court are on the list.
The Court of Appeal in Luxembourg will be taken, among others, by Dr. Klaus Grabinski and Dr. Patricia Rombach from the X. Civil Senate of the German Federal Supreme Court.
Prof. Dr. Maximilian Haedicke from the University of Freiburg will be a member of the central chamber in Paris and Dr. Ulrike Voß from the Higher Regional Court of Düsseldorf will be a member of the central chamber in Munich.
The German local chambers will be taken in Munich by Dr. Tobias Pichlmaier (Regional Court Munich I) and Dr. Mathias Zigann (currently Regional Court Munich I; from November 1, 2022 Higher Regional Court Munich), in Düsseldorf by Dr. Bérénice Thom (Regional Court Duesseldorf) and Ronny Thomas (Higher Regional Court Duesseldorf), in Mannheim by Holger Kircher (Regional Court Mannheim) and Dr. Peter Michael Tochtermann (Regional Court Mannheim), and the local chamber in Hamburg will be staffed by Sabine Klepsch (Regional Court Düsseldorf) and Dr. Stefan Schilling (Higher Regional Court Hamburg).
As is customary at the UPC, the local chambers, which are generally constituted by three judges, will be composed of two national judges and one international judge. In addition to the above-mentioned composition of the local chambers, there will thus be one more judge from the pool of judges. Although it was initially discussed whether all judges of the local chambers would be newly appointed from the pool of judges on a case-by-case basis, the UPC now seems to have decided on a fixed composition of the national judges for each local chamber. Only the international judges will probably be appointed on a rotating basis.
Regarding the appointment of the technical judges for the pool of judges, who are brought into the chambers of the UPC on a case-by-case basis, it should be emphasized that one third of the positions filled with German judges are occupied by experienced technical judges of the German Federal Patent Court (“BPatG”). The remaining positions were filled by patent attorneys from law firms and industry. It will be interesting to see how they will deal with potential conflicts of interest between their judicial activities and existing mandates and future mandates of their respective law firms or their companies, especially since some of the law firms were regularly involved in industry-wide litigation. According to Art. 7 of the regulations of the UPC (ac_07_22022022_e.pdf (unified-patent-court.org)), there will be a code of conduct for judges in this regard. However, the technical judges of the German Federal Patent Court are certainly at an advantage in this regard.
Dr. Michael Alt (Chemistry/Pharmaceutical) Patent Attorney
Uwe Ausfelder (Mechanical Engineering) Judge at the Federal Patent Court
Dr. Arwed Burrichter (biotechnology) Patent attorney
Michael Fleuchaus (Physics) Patent Attorney
Ulrike Keltsch (Physics) Patent Attorney at Airbus
Dr. Dennis Kretschmann (electronics) Patent Attorney
Dr. Roman Maksymiw (biotechnology) Presiding Judge, 14th Senate of the Federal Patent Court
Dörte Otten-Dünnweber (Physics) Judge at the Federal Patent Court
Stephanie Parchmann (chemistry/pharma) Patent attorney
Christoph Schober (Physics) Patent Attorney
Dr. Uwe Schwengelbeck (Mechanical Engineering) Judge at the Federal Patent Court
Max Tillmann (Mechanical Engineering) Patent Attorney
Carola Wagner (Chemistry/Pharmaceutical) Judge at the Federal Patent Court
Simon Walker (electronics) Patent attorney at Nokia
Stefan Wilhelm (mechanical engineering) Patent attorney at 3M
October 19, 2022:
European Patent with unitary effect is expected to start April 1, 2023, Sunrise Period to start January 1, 2023
The Unified Patent Court (“UPC”) has announced an update of the implementation roadmap prepared by the UPC Preparatory team in October 2022. This Roadmap depicts all the key activities and milestones of the UPC in the coming months.
Among other key activities, they also announced the entry into force of the UPC Agreement, which is currently planned for 1 April 2023. The related start of the Sunrise period, upon which Opt-out declarations for example may be filed with the UPC, is expected to be January 1, 2023.
The updated Roadmap can be downloaded from the Website of the UPC:
April 28, 2022:
The legal prerequisites for the entry into force of the unitary patent system have been accomplished. Operational preparations are currently underway (filling of judicial positions, preparation of IT, etc.).
According to current information, the Unified Patent Court is scheduled to start work in late autumn 2022 or early 2023. Unitary patents can also be granted from this date.
It is envisaged that the Unified Patent Court will have jurisdiction over questions of infringement and validity of all European patents. Approximately three months before the entry into force, a so-called “sunrise period” begins, during which European patents that have already been applied for or have been granted can be exempted from the jurisdiction of the Unified Patent Court by declaration of the respective proprietor.
The Unitary Patent (UP) is, formally speaking, a “European Patent with unitary effect”. It is not a new type of patent, but rather an advanced stage of the “classic” European Patent (EP). The application phase and the grant procedure are the same as for the EP. All administrative tasks are operated by the European Patent Office as well. Once an EP is granted, the holder may choose to request for unitary effect resulting in a UP. If the holder does not request a unitary effect, the EP validated in the countries of choice will become the classic bundle of national rights.
The Unitary Patent framework is the result of an enhanced cooperation between a great number of European Union (EU) Member States. It is expected that at least 17 EU Member States will take part right from the beginning: Austria, Belgium, Bulgaria, Czech Republic, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxemburg, Malta, the Netherlands, Portugal and Sweden. A further seven EU Member States have signed, but not yet implemented the Agreement in accordance with their respective constitutional requirements. A maximum coverage of all (currently 27) EU Member States can theoretically be reached. However, Croatia, Poland and Spain have not signed the Agreement and are not expected to do so soon.
The Unified Patent Court (UPC) is a new pan-European court set up with the overall aim to de-fragment and unify the European patent system. The UPC has been established through the Unitary Patent framework as well. It comprises a decentralized Court of First Instance with local, regional and central divisions located in certain EU Member States, and a centralized Court of Appeal. The UPC will have exclusive jurisdiction over infringement and validity of both classic European Patents and new Unitary Patents, as well as Supplementary Protection Certificates (SPCs). The territorial jurisdiction has yet to find its limits, since the wording of the respective statutes is not entirely clear. Therefore, the UPC may find itself competent e.g. even for a decision on an infringement of a classic European Patent in Switzerland or Spain.
There are no changes in the application phase. The application is to be filed for a European patent at the European Patent Office and is handled in accordance with the European Patent Convention until the patent is granted.
After the grant of a European Patent, a request for obtaining the unitary effect may be filed within one month from the publication of the mention of the grant in the European Patent Bulletin. This single request effects protection in all of the respective Member States, without the need to further validate the patent. The geographical coverage of a Unitary Patent is limited to those EU Member States that are part of the enhanced cooperation at the time of the request for unitary effect. This means that once a Unitary Patent is registered, its geographic reach will not be extended to those EU Member States that ratify the Agreement later.
A Unitary Patent (UP) as an object of property shall be treated as a national patent of the participating Member State in which the applicant had its (principal) place of business on the date of filing. If there is more than one applicant, this consideration shall apply to the applicants in order of their indication. If no applicant had a place of business or residence in a in a participating Member State, the UP as an object of property is treated according to German law. This rule has a significant effect on the relationship between co-owners: French law allows licensing without the consent of the other co-owners, and German jurisprudence doesn’t. In turn, German law allows a co-owner to assign its rights to a third party without the consent of the other co-owners, whereas French and Belgian law provides for a notification of the other co-owners (which have a pre-emptive right in this regard).
The applicant for a European Patent may choose to not request unitary protection at all and to validate all desired individual European Patent Convention member states (EU members and/or EU non-members) as known from the “classic” validation-based European Patent. Further, an applicant can, in addition to requesting unitary protection, decide to have the patent validated as a “classic” European Patent in all non-participating states, namely (a) in all EU Member States which have not ratified the related regulations and/or (b) in all non-EU-Member-States which cannot participate the Unitary Patent system.
The request for unitary protection does not trigger any fees. Once a Unitary Patent is granted, the proprietor will have to pay annual renewal fees. Those fees have been determined to correspond to the validation of a classic European Patent in four common European Patent Convention and EU Member states. For example: the renewal fee for the 5th year amounts to EUR 315, for the 10th year it is EUR 1,175, for the 15th year it is EUR 2,830, and for the 20th year it is EUR 4,855. Further, translation costs are reduced since translation into only one further language is required.
The Unified Patent Court consists of a decentralized Court of First Instance with local, regional and central divisions located in certain EU Member States, and a centralized Court of Appeal. Local divisions will be established in many Member States to the Agreement. Germany, for example, will set up four local divisions, located in Munich, Duesseldorf, Mannheim and Hamburg. A nordic-baltic regional division will be established in Stockholm. The seat of the central division will be in Paris, with a section located in Munich. The Court of Appeal will have its seat in Luxembourg.
The Unified Patent Court (UPC) has exclusive competence to handle litigation and revocation cases on matters relating to European patents with unitary effect, validated national patents based on a classic European patent and supplementary protection certificates. The competence includes patent infringement cases, actions for declaration of non-infringement, actions for provisional and protective measures and actions (as well as counterclaims) for revocation. For a transitional period of seven (possibly 14) years, national courts are granted an alternative competence for those matters. The UPC has no competence with regard to “true” national patents, i.e. patents not validated based on a European Patent but directly filed with the respective national offices.
The choice between alternatively competent local divisions of the Unified Patent Court (UPC) lies with the claimant. In the first place, the competence is determined by the type of action. Any stand-alone revocation action or declaratory action for non-infringement will be heard by the central division of the UPC. Infringement actions may be submitted before any local/regional division at the place(s) of infringement. Thus, infringing acts comprising an offer over the Internet will trigger certain forum shopping possibilities. Further, an infringement action initiated after the filing of a revocation action in front of the central division of the UPC will rule out the earlier competence, the case will be joined and heard by the local/regional division chosen as forum for the infringement action by the patent holder.
If an infringement action is brought before a local or regional division and a counterclaim for invalidity of the patent is filed, this division may (a) proceed both the infringement action and the counterclaim for invalidity together, or may (b) alternatively refer the counterclaim for invalidity for decision to the central division (and will possibly suspend the infringement action until a decision on validity is secured), or may (c) refer both claims to the central division (if the parties consent). The general perception is that the courts will proceed according to option (a) for most cases.
The legally competent judges of the Unified Patent Court (UPC) will be nominated out of a pool of experienced national judges in patent matters. When deciding on revocation actions or respective counterclaims targeting validity, all first instance divisions of the UPC comprise or will be complemented by a technically qualified judge. The technically qualified judges belong to a multinational pool of experienced individuals appointed for a specific field of technology. Prerequisites are a university degree and proven expertise in a field of technology as well as proven knowledge of civil law and procedure relevant to patent litigation. The UPC Court of Appeal is staffed with three legally qualified judges and two technically qualified judges.
During a transitional period of seven years after the Unified Patent system enters into force (i.e. presumably starting by the end of 2022 or in the beginning of 2023), the nationally validated classic European Patents and corresponding Supplementary Protection Certificats may be litigated alternatively in front of the Unified Patent Court (UPC) or in front of national courts. During this transitional period, a patent may also be opted-out from the jurisdiction of the UPC, unless an action has already been brought before it. Upon user consultation, the transitional period may be prolonged by another seven years by decision of the Administrative Committee of the UPC.
The language of the Court of First Instance will be (one of) the official language(s) of the EU-Member State(s) hosting a local division or sharing a regional division. The language of proceedings before the central division is the language in which the patent was granted. The Member States hosting a division of the Court of First Instance may additionally designate one or more languages of the European Patent Office. It is therefore expected that several local divisions will be able to offer proceedings in English. The language of proceedings before the Court of Appeal is the language of proceedings before the Court of First Instance.
The following provisional measures (preliminary decisions of summary proceedings) may be ordered by the Unified Patent Court:
The enforcement of such measures may be subject to the provision of security for potential damages suffered by an alleged infringer.
In case of risk of irreparable harm caused to the patent proprietor or risk of evidence being destroyed, the Unified Patent Court may grant, at its own discretion, provisional and protective measures without hearing the defendant. The same applies if evidence is to be preserved or premises are to be inspected.
The grant of a permanent injunction is up to the discretion of the court. Since the national law of most of the participating EU-Member States provides for injunctive relief as a general rule, we expect the Unified Patent Court to apply the injunction order more often than to refuse a respective request.
From the day the Unitary Patent framework enters into force, “classic” European Patents will be subject to the jurisdiction of the Unified Patent Court (UPC). For the duration of a transitional period of seven years, national courts remain alternatively competent to hear cases related to “classic” European Patents. The court system and the venue lies within the choice of the party initiating a court action. The proprietor of a “classic” European Patent may therefore be faced with, for example, a nullity challenge before the central division of the UPC. However, during a transitional period of seven (possibly 14) years, “classic” European Patents may be opted-out from the competence of the UPC. In consequence of an opt-out, only the national courts remain competent to hear cases related to the respective “classic” European Patents. An opt-out will prevent the jurisdiction of the UPC for the whole lifetime of the “classic” European Patent. Once the opt-out is registered, it takes effect for the entire European Patent “bundle”, i.e. for all designated Member States in which this patent has been validated. Please note: the new Unitary Patent is not eligible for an opt-out.
The opt-out may not only be requested after the Unitary Patent framework enters into force (i.e. during the transitional period of seven years after the start), but also during a “sunrise-period”, which begins about three months before the Unitary Patent framework enters into force. An opt-out request duly filed during the “sunrise period” will be effective on the day the Unitary Patent framework enters into force. In consequence, the targeted patent can neither be enforced nor attacked with a revocation action in front of the Unified Patent Court (UPC). An opt-out request duly filed after the entry into force of the Unitary Patent will only be effective if the patent concerned has not been subject to proceedings before the UPC.
A valid request for opt-out can be submitted only by the true legal owner(s) of the classic European patent. It is not decisive who is entered in the European patent register as the “Applicant”. Further, co-owners of European patents or separate owners of national parts of a European patent are required to act unanimously. The request for opt-out will not be examined on legal validity by the registry of the Unified Patent Court (who is the competent entity for recording opt-outs). Any formal deficiency may lead to objections in court proceedings that may not be overcome at this stage anymore.
The opt-out request may be filed as soon as a patent application is published. Opt-out may be requested during the full economic life circle of a patent. Therefore, it is also possible to request an opt-out regarding expired patents (possibly useful to prevent a centralized revocation action in order to avoid damage claims for past infringements).
No. There is no possibility to opt-out a European patent with unitary effect.
The Unitary patent framework provides for a “withdrawal from the opt-out”. This means that the patent proprietor may, at any time during the lifetime of a “classic” European patent, reverse the opt-out and reactivate the competence of the Unitary Patent Court. However, such withdrawal from the opt-out is only possible if the patent concerned has not been subject to proceedings before a national court. The withdrawal from the opt-out waives the right to make use of the exception again for the specific patent.