Within the framework for jurisdiction in the UPC, explained by Aida Tohala (here), there is scope for parties to make strategic decisions. While the judges have been at pains to stress that the UPC will develop its own international approach to procedural and patent law issues, without being wedded to the practice in any one contracting state, it nonetheless seems reasonable to expect each panel of judges to draw on the background of the various national and international legal traditions that contributed to the UPC.
This article considers the potential advantages and disadvantages of pursuing cases before the various Central, Local and Regional Divisions, as well as the implications of related cases outside the UPC.
Factors to consider
- How quickly will the action progress? Users will have to take into account the case load of the Division, the potential for jurisdictional challenges (especially during the opening years of the UPC’s operation), the likelihood of interim procedural issues (and associated appeals) and the determination of the panel in question to keep the case running on time (the UPC’s Rules of Procedure give a target of one year to reach a first instance hearing on the merits).
- What are the language options before the different Divisions? All Local and Regional Divisions are now offering English as the language of proceedings but, depending on the Local Division, proceedings could also be commenced in Slovenian, Dutch, French, German, Swedish, Finnish, Italian or Portuguese. The need for translation impacts deadlines in practice.
- What attitude will the panel take to allowing certain types of evidence, such as granting seizure or inspection orders to gather evidence, expert evidence, and will there be any scope for cross-examination? In theory documentary disclosure, expert evidence and cross-examination are all possible but some judges will be more familiar with these elements of procedure than others.
- How will infringement and validity/revocation interact? The UPC Agreement gives scope to Local and Regional divisions to hear revocation counterclaims themselves, or to transfer them to the Central Division while proceeding with the infringement action, or staying it to await the Central Division’s decision.
Which Division to choose…
We consider some scenarios below, with comments on the potential strategic considerations.
- Preliminary Injunction: The proprietor of a patent relating to a biologic finds that a biosimilar company has obtained or will imminently obtain a centralised procedure marketing authorisation, which has effect in all EU Member States. If the patentee wants to apply for a preliminary injunction within the UPC (having withdrawn any opt-out, if needed), how do the factors above play out?
- Trigger point: With potential infringement in all EU member states (with varying degrees of imminence), the patentee will want to identify the forum which offers the best chance of convincing the panel that “provisional measures are necessary”. Courts such as the Brussels Local Division or the four German local divisions may be more accustomed to finding that grant of an MA (perhaps in combination with a lack of satisfactory response to a notice letter) is sufficient to constitute threatened infringement. Judges who have worked in other jurisdictions may be more used to waiting for price or reimbursement approval, or even an actual launch before considering a preliminary injunction to be justified. Meanwhile Judges from the Dutch national courts can reasonably be presumed to have the most experience of tackling these kinds of questions, because of their background of granting cross-border relief.
- Complex Technology: A party’s (non-)infringement case is complex and will require an in-depth technical understanding from the panel for the arguments to be followed. What would be a favourable forum?
- Expert evidence vs technical judges: The ability to present a detailed technical case clearly through a statement from a party’s expert may well be critical where the issues are complex. The Nordic Baltic Regional Division is hosted by at least some countries that have experience of accepting expert evidence and subjecting it to in-depth analysis. Claimants might find that the default panel of this Regional Division, which will consist of three legally-qualified judges, is more open to engaging with the parties’ expert evidence, compared to a panel that already includes a technically-qualified judge who brings their own background knowledge to bear. In other circumstances, the participation of technically-qualified judges (automatically assigned to panels at the Central Division) might enable procedural efficiency, without the need to request permission for expert evidence. Of course if a potential infringer wants to take the initiative in seeking a declaration of non-infringement, the only forum is the Central Division, but the differences in types and number of Judges forming the Panel will also be relevant when defending a claim of infringement. This variation also makes it more challenging to judge the most appropriate content for a centrally filed protective letter, since the audience for such a letter will not be the same in each division.
- Pre-emptive Action: A potential infringer is concerned about a UPC preliminary injunction but the relevant patents are currently opted out. Is there any pre-emptive action that could be taken to minimise the impact of a UPC infringement action?
- National “torpedo” actions: The UPC Agreement states that an opt-out can be withdrawn “unless an action has already been brought before a national court”. Starting one or more national revocation actions in EU Member States could prevent or limit the patentee’s ability to start UPC infringement proceedings on those patents. Proceedings before non-UPC courts such as those of the UK could also be a means of obtaining a reasoned decision on invalidity to be used to support similar arguments in EU national courts and/or the UPC. Such options are discussed more here.
- EPO Oppositions: EPO opposition proceedings are at a relatively advanced stage, with the potential for acceleration if UPC infringement proceedings are started. Can we anticipate whether certain divisions will be more likely to proceed with a UPC action in parallel with the EPO opposition or more likely to stay and await the outcome at the EPO?
- Waiting for the TBA: Experience suggests that certain national courts, perhaps Portugal would be an example, prefer to have EPO proceedings resolved before deciding infringement. In the German national courts, the implications of the CJEU’s decision in Phoenix v Harting (28 April 2022) are still being resolved and some uncertainty might likewise be expected from the German Local Divisions of the UPC. As mentioned above, a suspected infringer has more limited options of forum within the UPC: the Central Division is mandated for seeking a declaration of non-infringement (as the Claimant) as well as for starting a revocation action (as opposed to counterclaiming for revocation), but commercial plans for launch in individual UPC countries should at least take into account the strategic implications for potential UPC litigation. Since infringement claims can be commenced based on place of infringement as well as domicile of the infringer, the country of launch will affect the choice of UPC forum available to the patent owner.
- Claim Construction and Scope of Protection: To avoid an “angora cat” situation, having validity and infringement addressed at the same hearing will be a priority for the alleged infringer. With the Local and Regional Divisions having the option to deal with validity themselves, or transfer that part of the case to the Central Division, what are they likely to choose?
- Bifurcation: At the moment the German national courts provide the classic example of bifurcation while many others, such as the Netherlands and France deal with infringement and validity together. Even if the German Local Divisions do not decide to bifurcate, parties may be uncertain about a given panel’s experience of deciding validity issues. In practice, much may depend on the caseload and pace of the different divisions. The one year target timeline is already ambitious for cases where both infringement and validity are in issue, and, if two divisions have to coordinate their procedures, timelines could become more challenging. Costs will also be a factor if the two aspects run in parallel.
Monitoring UPC developments
As confirmed by the UPC Administration Committee at their June meeting, the UPC had 23 ongoing cases: 6 protective measures, 3 revocation actions and 14 infringement actions. These actions are ongoing before the Düsseldorf, Hamburg, Munich and Milan Local Divisions, the Nordic Baltic Regional Division and the Munich Central Division. It appears that at least two of the applications for provisional measures (presumably PIs) have been filed at the Munich Local Division, and there have also been reports of a PI filed before the Vienna Local Division. 236 protective letters have also been filed. The timeline for an application for protective measures is to be set by the Court, so it is not clear when we might start to see the first decisions from the UPC. However, in light of the urgency aspect of applications for provisional measures, and bearing in mind the message that the UPC Judges will be sending based on the speed with which they deal with these first applications, decisions might be expected in the next 1 – 3 months.
Industry and patent lawyers will be watching closely to see how all the predictions play out, and in particular will be waiting for rulings of the Court of Appeal to start to bring the promised harmonisation.