This article was first published in Kluwer Patent Blog [June, 2024].
It has been about a year since the UPC issued its first PI decision, making it a good time to reflect on the case law created so far.
The year has seen PI applications being made in front of a range of Local Divisions, including Düsseldorf, The Hague, Helsinki, Vienna, and Hamburg, with most determined PIs having been filed at the Munich Local Division. Thirteen have been determined at first instance (2 ex parte), with 6 being granted (including the 2 ex parte applications). The year has also seen two appeal decisions, both refusing to grant or maintain PIs: 10x Genomics v Nanostring, overturning the first instance decision, and VusionGroup (previously SES Imagotag) v Hanshow, upholding the first instance decision. So, what can we take from these decisions?
The court will consider the validity of the patent in suit. Not a cursory consideration of prima facie validity, but a real, in depth consideration to determine whether, on the balance of probabilities, the patent is more likely than not to be invalid, in which case the PI will be refused. This approach exemplified by the Court of Appeal in 10x Genomics v Nanostring is most reflective of the national approach in, for example, Italy, France and the Netherlands, which can broadly be considered as sitting at one end of the spectrum of how validity is currently approached nationally in PIs. As such, it reflects a real departure from the current approach in many of the Contracting Member States – with, for example Bulgaria, at the other end of the spectrum, where PI proceedings are heard by the infringement courts with no consideration of validity (proceedings there being bifurcated); and many others with some assessment of prima facie validity sitting closer to that end.