Since 1 June 2023, the Unified Patent Court (UPC) has replaced national courts as the court of jurisdiction for infringement and invalidity actions relating to unitary patents and European patents that have not been opted out from the new court system. Marie Houppe assesses the latest Unified Patent Court news based on its first three months of operation.
In our recent webinar '5 things you need to know about opt-outs, European patents and the Unified Patent Court', we took an in-depth look at the latest Unified Patent Court news by assessing the court's activities of the Unified Patent Court (UPC) since its launch in June 2023, including the first actions brought before it. In this article, we provide a summary of some of our key findings and discussions.
Unified Patent Court news: The first UPC rulings
The early days of the UPC were rather timid, as it considered only three nullity actions and around 20 counterfeiting actions. The three nullity actions were all in the pharmaceutical field and brought before the Central Division in Munich.
Nonetheless, these few actions already raised questions about the patent strategy of the owner and/or opponent. For example, it was noted that an action for invalidity had been filed against a patent (EP3056564) that was already the subject of opposition proceedings before the European Patent Office (EPO). The question then arose as to why the owner had not opted out the patent right, given that it was already the subject of a centralised revocation attempt before the EPO.
The parallel procedures between the EPO and the UPC also raised the possibility of the UPC staying its ruling with regard to decisions taken by the EPO on the same patents. The Rules of Procedure of the UPC seem to leave this decision to the discretion of the new court, which can choose to stay the ruling if a decision on the merits can be expected quickly from the EPO, for example. However, there seems to be no clarification in the text regarding the necessary speed of the decision.
Similarly, an action for invalidity was filed against a patent (EP3666797) before the UPC, pending the end of the EPO opposition period in February 2024. Hypothetically, the failure to take into account the observations of third parties filed before the EPO's examining division could justify the choice of filing an action before the UPC rather than before the EPO.
What have we learned three months after the UPC's entry into force?
In the latest Unified Patent Court news, there are 35 infringement actions and six invalidity actions visible in its case management system (CMS) three months after the entry into force of the UPC.
Importantly, the UPC has made it possible to bring a centralised action for revocation against not only unitary patents, but also European patents that have not been opted out from the court's jurisdiction (Read more about the pros and cons of opting out of the UPC system). The question arises, therefore, what incentive will have on potential applicants who might not have chosen previously to initiate action before national courts.
For now, Munich also remains at the head of the local and regional divisions in terms of where most actions are brought.
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