Dynamics Updates
Emerging Practice Points from the UPC
Recent cases have shown that the UPC has a broad jurisdiction, perhaps wider than many had expected, both in terms of geographical and temporal reach.
The UPC has jurisdiction beyond the signatory states.
The UPC has jurisdiction to hear patent infringement claims in respect of all national designations of EP patents, including in respect of non-UPC states and even non-EU states, where at least one defendant is domiciled in a UPC state.
This approach was first set out in the decision of the Dusseldorf Local Division in Fujifilm v Kodak but has gained real traction following the decision from the CJEU in BSH v Electrolux[1]. In the Electrolux case, in a significant shift from the CJEU’s previous decision in GAT v LuK[2], the CJEU held that a national court in which a defendant is domiciled has jurisdiction to determine an allegation of patent infringement where the patent was granted by another EU state and even where validity is contested.
This significant shift has been seized upon by many claimants before the UPC resulting in a string of decisions showing how the decision will be applied by the UPC: As the UPC is deemed to be a court of a Member State[3], so long as the proceedings are brought in the local division in which one of the defendants to an action is domiciled, that court will have jurisdiction to adjudicate on infringement issues related to European patents validated in non-UPC Countries.[4] This approach was followed by the Court of Appeal of the UPC in TGI Sport Suomi Oy and others v AIM Sport Development AG. In that case AIM had brought infringement proceedings in the Helsinki Local Division against a TGI Sport Suomi Oy, a company domiciled in Finland. AIM were granted leave to amend their case (amongst other things) to add a UK group company as a Defendant in relation to alleged infringing activities in Germany and Spain, jointly with other defendants. TGI’s appeal against that decision was unsuccessful.
The UPC has now issued a partial injunction for one amended[5] patent covering the UK, as well a separate finding of invalidity for a different patent, on an inter partes basis only; see Fujifilm v Kodak.
The UPC has jurisdiction to deal with acts pre-dating its formation
Earlier this year, the case of Esko-Graphics Imaging GmbH v XSYS Germany GmbH highlighted that the UPC’s jurisdiction extends both to:
Service on foreign defendants may prove slower than hoped by Claimants, as the Court of Appeal of the UPC has confirmed in Panasonic v Xiaomi that service on foreign defendants must follow the procedures prescribed by the Hague Service Convention, and that only once service under the Hague Service Convention has been attempted will the court considered authorising alternative service[6]. Experience suggests that this is likely to cause delays in serving Chinese defendants in particular, where service under the Hague convention is often slow due to additional requirements imposed on parties by the Chinese and Hong Kong Central Authorities.
The Panasonic decision does provide some comfort for prospective claimants, as in that case the court split the claim against the Hong Kong entity and other Chinese entities from the original infringement action and allowed the original infringement action to continue and made an order for alternative service on the defendants in Hong Kong and China, ordering that the steps already taken constituted valid service. Such decisions on alternative service are however fact specific.
Whilst some extensions were granted while systems were bedding in during the early months of the UPC, such as in Edwards Lifesciences v Meril[7], more recent decisions indicate that the UPC will only grant extensions of time in exceptional circumstances. Even when extensions are granted, any extensions are generally short.
Generally, successful applications will require evidence of the objective need for the extension and parties are obliged to submit a request for an extension as soon as it appears clear that it will not be possible to meet a deadline. In ITCiCo Spain SL v BMW AG the Paris Central Division refused an application for an extension to file a defence to a revocation action made the day before the deadline. The court found that the issues relied on by the applicant should have been apparent much earlier. The court’s Order states that parties are ‘expected to seek a solution in an appropriate time and act accordingly’. Failure to make an adequately evidenced application in good time can have serious consequences and in that case the defendant’s patent was revoked by default.
Should amendments to pleadings be necessary, parties are advised to make the application as soon as the change of circumstances or knowledge of new facts necessitates the amendments.
Esko-Graphics Imaging GmbH were refused permission to include a claim for infringement in the Netherlands having made such application 10 weeks after learning of the reinstatement of its patent in the Netherlands, even though the court was satisfied that the amendment would not unreasonably hinder the other party in the conduct of the action. The court found that in line with standard of diligence required, it should only have taken 4 weeks to get advice and to decide whether make amendments and therefore refused permission to make the amendment, as it could have been made earlier with reasonable diligence at an earlier stage.
The court has discretion to grant an order for security if the financial position of the other party gives rise to a legitimate and real concern that costs may not be recoverable or that a costs order may not be enforceable, or will only be so in an unduly burdensome way.[8]
The burden of proof lies with the applicant[9]. Once an applicant has presented credible reasons and facts it is for the opposing party “to challenge these reasons and facts in a substantiated manner, especially since that party will normally have knowledge and evidence of its financial situation. It is for the Claimant to argue that and why a security order would unduly interfere with [their rights]”: see Maxeon v Aiko.
It was thought that applications could be brought by any party as Rule 158 of the UPC Rules of Procedure provides that the court may order security for costs “following a reasoned request by one party”[10].However, following the more recent Court of Appeal decisions in Aortic Labs Srl v Emboline Inc it is now understood that Article 69(4) of the UPCA imposes a limit on this broad rule and only defendants may be allowed to make applications for security for costs. Further, in cases where both parties are claimants and defendants for different parts of the case (e.g. where there has been a counterclaim for revocation), only the defendant in the initial claim can make an application for costs.
Each party requires a named representative, and this representative is required to be an independent third person. Whilst the Court of Appeal of the UPC held in Suinno v Microsoft[11] that this can be someone employed by a party, in many cases this might not be possible due to the requirements for independence and not someone with “extensive administrative and financial powers within the legal person”.
Specifically, in Suinno the Court of Appeal stated that a person with such powers, “whether as a result of holding a high-level management or administrative position or holding a significant amount of shares in the legal person”, would not be able to act as the “independent counsellor by serving the interests of his or her client in an unbiased manner without regard to his or her personal feelings or interests”.
This article was last updated on 4 August 2025.
[1] CURIA - BSH Hausgeräte GmbH v Electrolux AB
[3] Article 71a of the Recast Brussels Regulation.
[4], Alpinestars SPA v Dainese SPA. See also Mul-T Lock France v IMC, Creations, Synegenta v Sumi Agro, and Seoul Viosys v Laser Components.
[5] The amendments had not been requested at the UKIPO at the time of the decision. The amendments are therefore only effective inter partes.
[6] Panasonic Holdings Corporation v Xiaomi H.K. Limited (UPC_CFI_330/2024, UPC_CFI_332/2024 and UPC_CFI_335/2024)
[7] UPC Exceptionally grants extension of time limit for preliminary objection; Extension of time limit for statement of defence
[8] Article 69(4) UPCA and Rule 158 RoP
[9] AYLO PREMIUM LTD v DISH Technologies L.L.C.
[10] See for example Aylo v Dish
[11] ORDER_Suinno v Microsoft_2025_02_11, see paragraph 23
Unconventional Service: igus v. Whale Technology
UPC_CFI_318/2025, decision of 5 August 2025 (ORD_34299/2025)[1]
In a default judgment issued by the Düsseldorf Local Division of the Unified Patent Court, Whale Technology (Shanghai) Co., Ltd. was found to have infringed European Patent EP3912243, held by igus GmbH.
Interestingly, service of the statement of claim was carried out on the same day that the action was filed with the UPC via hand delivery to an employee of Whale Technology by a bailiff at a trade fair.
Allowing service of the statement of claim at a trade fair is consistent with an earlier decision from the Düsseldorf LD, which established the principle that a trade fair stand where deliveries are advertised may be considered to be a temporary place of business within the UPC member states of a company domiciled outside the UPC member states[2]. However, in the time since that earlier decision, the UPC Court of Appeal has stated, albeit in a slightly different context, that the rules relied upon by the Düsseldorf LD to justify the principle that a trade fair stand may be considered a temporary place of business do not apply to companies domiciled outside the UPC member states[3].
Furthermore, the UPC Rules of Procedure state that service of the statement of claim is carried out by the UPC Registry[4], but given that the statement of claim was done on the same day as it was filed with the UPC, it seems safe to assume that the bailiff was arranged by the claimant itself.
Service in this manner at trade fairs is standard practice in many national jurisdictions, including in Germany, but it is not clear from the present decision why the Düsseldorf LD considered that the location or method of service used in this case was appropriate in the context of the UPC Rules of Procedure. As the UPC Court of Appeal has stated “The UPC has its own service provisions… National laws of a Contracting Member State do not take primacy. There is no reason why the UPC should follow the practice of some German courts… since the UPC has its own procedural rules and furthermore the practice of some German courts does not create a precedent”[5].
Whale Technology failed to respond to the statement of claim within the prescribed three-month period beginning on the date of the service. As a result, after considering the facts put forward by igus to justify the remedies sought, the Düsseldorf LD gave a decision by default.
The decision highlights the balance of the claimant’s interest in obtaining a final decision in a reasonable timeframe with the defendant’s interest in having sufficient notice and time to enter a defence to the claim. Indeed, the rules on service of documents are in place to ensure that the court can ensure that the defendant’s rights to present a defence have been respected before delivering a default judgement.
It is unlikely that this decision will be appealed, so it may be some time until the Court of Appeal weighs in on this line of case law being established by the Düsseldorf LD. Until then, the Düsseldorf LD may remain an attractive forum for claimants who are interested in unconventional means of service.
[1] https://www.unifiedpatentcourt.org/en/node/136896
[2] https://www.unifiedpatentcourt.org/en/node/854, M-A-S Maschinen- un Anlagenbau Schulz GmbH, UPC_CFI_316/2024, ORD_36068/2024 of 17 June 2024, see Reasons for the order: “[A temporary place of business may be] a trade fair stand if – as is usually the case – at least deliveries are also advertised there”.
[3] https://www.unifiedpatentcourt.org/en/node/988, Panasonic v. Xioami, UPC_CoA_86/2024, order dated 5 August 2024, see para. 40: “R.271.5(a) RoP does not apply to [companies with registered offices outside the Contracting Member States and outside the EU]”.
[4] For service within the UPC member states, Rule 271.4: “the Registry shall serve the Statement of claim on the defendant”, and outside the UPC member states Rule 274.1: “it shall be so served by the Registry”.
[5] https://www.unifiedpatentcourt.org/en/node/960, NEC v. TCL, UPC_CoA_69/2024, order of 29 July 2024. See paragraph 38.
Edwards v Meril – The Interaction of Parallel UPC and EPO Proceedings
Edwards Lifesciences Corporation v. Meril Lifesciences PVT Limited et al. (UPC_CFI_380/2023)
Decision of 21 July 2025 (ORD_598566/2023)[1]
What happens when a European Patent Office opposition is pending at the same time as a UPC action? And what happens if the EPO and UPC reach differing conclusions on the validity?
Background
Edwards Lifesciences and Meril Life Sciences are long-time rivals in the transcatheter heart valve space. Their dispute centres on Edwards’s Unitary Patent EP3769722, covering delivery systems for heart valves. Edwards filed a UPC infringement action in October 2023, targeting Meril’s Navigator THV Delivery System in Estonia and Lithuania. An EPO opposition was filed in March 2024.
Parallel Proceedings, Conflicting Timelines
The UPC provides the possibility for an infringement or revocation action to be stayed when a rapid decision is expected in a co-pending EPO opposition. At the same time, the EPO recently introduced a new regime[2] for accelerating oppositions when there is a co-pending UPC action.
In the present case, the EPO fast-tracked the opposition, issuing a preliminary opinion within four months and scheduling oral proceedings for January 2025. Meanwhile, Meril applied to stay the UPC proceedings pending the EPO outcome. The Nordic-Baltic Regional Division refused, citing procedural rules and the likelihood of a lengthy appeal before the EPO reaches its final decision.
Meril appealed, and the UPC Court of Appeal clarified that while a stay is not mandatory, a final EPO decision is not required to justify one. Since this was the primary justification for refusing the stay, the Court of Appeal sent the matter back to the first instance for the Nordic-Baltic Regional Division to decide how to deal with the co-pending opposition.
The Court of Appeal suggested a number of options beyond an immediate stay of the proceedings:
The Nordic-Baltic RD ultimately decided to continue with the oral hearing as scheduled and to decide later whether further procedural steps were required based on the outcome of the opposition proceedings.
Diverging Outcomes
After the EPO oral proceedings, the patent was upheld in amended form, but the claims upheld by the opposition division did not match any of Edwards’s 22 requests in the UPC case. Edwards asked the UPC to adopt the EPO’s version. Meril objected, arguing the UPC should stick to the requests already on file.
The UPC sided with Meril, maintaining the patent in a narrower form as set out in one of Edwards’s claim requests, which had the same independent claim as the EPO version, but without dependent claims.
How Will the Diverging Outcomes Be Reconciled?
The UPC Court of Appeal has already commented on one type of conflict between diverging EPO and UPC decisions in Carrier v BLITZER[3]: if one body revokes and the other upholds, the revocation prevails. However, this is the simplest case of diverging decisions and it’s not clear what the effect would be if both uphold the patent in different forms. Will the first decision prevail, or the latter? If the latter decision prevails, is it possible for the latter decision to uphold broader claim scope without impermissibly broadening the scope of protection after grant of the patent? So far, these questions remain unanswered.
In the present case, the EPO decision is under appeal. If the board of appeal agrees with the opposition division and upholds broader claims than the UPC, the most likely outcome is that the unitary patent will be maintained with narrower scope based on the UPC’s decision, while the broader scope maintained by the EPO will be in force for national validations elsewhere in Europe.
Why It Matters
This case highlights the growing complexity of managing parallel UPC and EPO proceedings. It also underscores the strategic importance of claim consistency and procedural timing— particularly in cases involving accelerated opposition.
[1] https://www.unifiedpatentcourt.org/en/node/136545
[3] https://eip.com/global/latest/article/upc_court_of_appeal_guidance_on_stay/
No breach of Inspection Order by Respondent who refused access
Centripetal Limited v. Palo Alto Networks, Inc. UPC_CFI_636/2025
Decision of 25 July 2025 (ORD_32958/2025[1])
A recent procedural issue in an infringement case before the Local Division in Mannheim has highlighted the importance of precision when requesting relief.
Background
The present matter concerned an inspection order (also commonly known as a “saisie” order) made in favour of the Claimant-Applicant, Centripetal Limited, as part of infringement proceedings brought against Palo Alto Networks Inc. in the LD Mannheim. Centripetal had requested permission to inspect the alleged infringement at the offices of the Defendant-Respondent, a California based cybersecurity firm with a “branch office” in Munich. The order granting the saisie was made by the Court of First Instance (ORD_32784/2025[2]) following referral back from the Court of Appeal. That order required amongst other things that the Respondent preserve relevant evidence and provide assistance to the Court appointed expert conducting the inspection on behalf of the Applicant.
The Patent in suit (EP 3 821 580) related to network security and so-called “network protection systems” and was in force, following effective withdrawal of the relevant opt-out, in France, Germany, Italy and the Netherlands.
According to the Applicant, the alleged infringement comprised the Respondent’s “Next Generation Firewall”, “Advanced Threat Protection” and “App-ID Cloud Engine” systems, a full setup of which, along with related technical documentation, necessitated inspection.
Specifically, the order granting the saisie ordered the Respondent to:
When the time came for the Applicant to carry out the saisie, it transpired that the Munich office specified in the order was merely a co-working space used by the Respondent at which only a single sales person was present. There was no example of the alleged infringing system or related technical documents on the premises. In fact, these materials were located at the Respondent’s US headquarters, and Counsel for the Respondent refused to enable technical means by which these materials might have been accessed, or an example of the alleged infringement monitored remotely.
The Present Matter
The Applicant went back to the Court seeking an order that the Respondent be held in contempt of court for alleged non-compliance with the saisie order.
The Respondent argued in its defence that the Applicant had identified the wrong premises in its original saisie request; an error it could have avoided had it inspected the relevant company register. The premises selected were not a branch office of the Respondent, a California company, but were instead the offices of Palo Alto Networks (Germany) GmbH, a separate legal entity, which only carried out sales and marketing activities.
This is somewhat confusing as the Court of Appeal had previously referred to the Munich premises as a “branch” of Palo Alto Inc., and the saisie order referred to the Munich premises as being both “the Defendant’s “German branch office” and “the Defendant’s premises”. It would appear to be an important distinction in the circumstances between whether a premises is a “branch” of a foreign defendant or simply the office of a separate (albeit possibly related) entity.
Nevertheless, the Court’s view in respect of the contempt of court issue was that the Respondent had not acted unlawfully and ultimately ruled to dismiss the application, with costs payable by the Applicant. In reaching its decision, the following principles emerged.
These issues may not have been immediately apparent to the Applicant given the wording of the saisie granted as identified above. On its face, that wording could be interpreted as being a categorical obligation attaching to the Respondent as identified in the proceedings (i.e. the US entity) obliging them to do what needed to be done to facilitate the inspection in Germany.
However, the written rules are clearer on this: 199 RoP specifies that orders for inspection (i.e. those made in accordance with Art. 60(3) UPCA) relate to “products, devices, methods, premises or local situations in situ and 192.2(b) RoP requires indication of measures requested “including the exact location of the evidence to be preserved” [Emphasis added].
What is now clear is that the onus is on applicants to specify with total precision the inspection order they are seeking, especially in cases with a cross-border element, and the Court will assume that they have done their homework on this. This seems reasonable since the respondent will be faced with a court order with which it must quickly decide whether to comply, at the risk of being held in contempt. It must therefore be absolutely clear on the face of the order what is actually required.
This will be tricky in some cases as it can not always reasonably be assumed what evidence will be present at a premises prior to inspection. Had the Applicant in the present case specified additionally that the Respondent should be obliged to set up means to provide the evidence in Germany in the event it was not present at the Munich office, the Court may have been reluctant to make such an order. Applicants should carefully check relevant national registers to ensure that the premises they are targeting are in fact connected to the party against which the order is sought.
Unlocking UPC Success: A Five-Step Framework
The UPC is a new pan-European court which opened for business on 1 June 2023. It adjudicates disputes relating to European patents (unless they have been opted out), including unitary patents. Instead of litigating country-by-country, a European patent holder (whether the European patent is a unitary patent or not) can get a single judgment effective in potentially all UPC participating member states, making enforcement broader and potentially more efficient.
Below is a timeline of a hypothetical claim. The expected duration is significantly compressed versus the national courts of contracting EU member states, although the timing is dependent on court discretion and the circumstances of the claim itself. Please click any of the nodes on the timeline to read more about the associated sections. An asterisk (*) next to a node on the timeline indicates that the event is contingent upon specific case circumstances and may not occur in every case.
Before a claim is started, it is important to first assess the strategic implications of litigating in the UPC. This involves ensuring the patent in question falls under the UPC's jurisdiction, determining the appropriate division of the UPC to file the claim, and determining the appropriate language. Below are a few of many significant factors to consider prior to beginning proceedings at the UPC. However, with our experience and strategic approach, we ensure that navigating the complexities of the UPC is seamless. We monitor UPC developments on our UPC knowledge hub to maintain a modern knowledge database dedicated to providing support and expertise necessary to maintain full and effective custody of your claim.
The UPC is a court which serves the EU Member States which have signed the Agreement on a Unified Patent Court (“UPCA”). The jurisdiction of the UPC includes classical (non-unitary) European patents, European patents with unitary effect, and supplementary protection certificates. Despite being a new court, the UPC’s jurisdiction extends to acts before the UPCA came into force, as best explained by Dalton Tucker in their article on Esko-Graphics Imaging GmbH v XSYS Germany GmbH. However, the UPC does not have jurisdiction over national patents. Also, classical European patents (but not unitary patents) can still currently be litigated in national courts as well as at the UPC. As a result, litigation at the UPC can operate in parallel to national patent litigation for the 18 EU Member States which have currently ratified the UPCA. The UPC also has jurisdiction over acts occurring outside the signatory member states, but only where a defendant is based in a UPC territory. This is best explained by Darren Smyth: FUJIFILM Corporation v Kodak Holding GmbH.
By default, classical European patents are subject to the jurisdiction of the UPC, allowing the patent proprietor and third parties to bring proceedings concerning the patent before either the UPC or the national court of any UPC-participating country where the patent is validated. However, your European patent could have been opted-out of the UPC’s jurisdiction, in which case proceedings can only be brought in national courts.
We can search the UPC register to ensure that the patents we intend to enforce have been opted out at any stage. If opted-out, we can opt back into the UPC’s jurisdiction by withdrawing the original opt-out, but only if no litigation relating to this applicable patent has been brought before a national court of any UPC-participating member state. Once any such litigation has begun, the option to withdraw the opt-out is irrevocably lost. Also of strategic importance is the timing of a withdrawal of an out-out, and that if a patent is opted back in, it can no longer be opted-out. The consequences of opt-out, specifically a defective opt-out, are discussed by Darren Smyth: Toyota Motor Europe v Neo Wireless.
In contrast, infringement actions are generally brought in the local divisions, which are established in individual member states, and the regional division, which serves multiple countries where the infringement has occurred or where the defendant is based. These divisions offer familiarity with local laws, having one or two judges on each panel from the country concerned, and the option to conduct proceedings in the local language, which is beneficial for parties based in a particular region.
The proceedings language for local or regional divisions will be the official EU language of the hosting member state, one designated by the states sharing a regional division, or in English. Alternatively, the language the patent was granted at the EPO can be used by agreement of the parties with approval from the CFI, or by decision of the President of the CFI upon request from one of the parties.
Where more than one language is available, the choice of language is made by the party who begins the proceedings unless the action is brought in a local/regional division against a defendant who has their principal place of business in that state – the proceedings must be in the language of that state. The defendant can also apply to the CFI to have the language changed, but only with good reason; usually granted if it would be unfair to the applying party. Joanne Welch discussed how the UPC balances the interests of the parties when determining the language of proceedings in: Plant-e Knowledge v Arkyne Technologies.
The UPC does not have a formal obligation to notify the opposing parties before initiating a claim; actions may be commenced without prior notice.
However, it is important to fully understand the implications of the steps taken (or lack thereof) prior to filing a claim. For example, damages may be affected if the infringer was unaware of a unitary patent due to lack of translation into a language they understand. Moreover, when navigating the complexities of F/RAND cases, it is important to consider whether behaviour prior to the bringing of proceedings was appropriate. As explained in section below, with the front-loaded nature of actions before the UPC, a suitable pre-action strategy is essential for the resulting litigation.
Beyond the factors that may influence the court’s assessment of your claim, there are various practicalities that need consideration. For example, by the very nature of the UPC's jurisdiction over (classical) European Patents, the withdrawal of an opt out of a European patent may be used to signal upcoming enforcement. We can guide you through strategic timing, managing and monitoring the opt-out status of European patents, and correctly dealing with all practicalities of a patent portfolio to ensure a smooth litigation process at the UPC.
A well-qualified expert can be critical to succeeding in a patent case. In contrast to certain other jurisdictions, an expert appointed by a party is required to maintain independence and objectivity while fulfilling their duty to the UPC. This entails impartially assisting the panel on matters within their area of expertise, taking precedence over any obligations to the instructing client.
This process may become more complex if the panel decides to appoint a court expert, which it may do at the suggestion of the parties or of its own discretion – although this is unusual. The role of this court expert would be to elucidate the technology to the judges and participate in the oral hearing, where they may be questioned. Should their responses diverge from the testimony of the expert witness, the court is likely to favour the opinion of their appointed expert. The Registry maintains a list of technical experts.
The UPC has a structured regime to allow for safeguarding of confidential information such as trade secrets, personal data. Upon application by a party, a staged process can be initiated where confidential documents are uploaded to the CMS, assessed for confidentiality and ringfenced for viewing only by a specific confidentiality club. If held to be confidential these documents will not be made public, or only made public with redactions. The panel may also decide to close interim or oral hearings to public access.
Separately, note that any member of the public may apply for any documents not under the confidentiality regime to be made available. The panel must grant the application, unless the legitimate reasons given by a protesting party outweigh the interest of the applicant. If granted, the court may also provide documents in redacted form, which the third party can accept or apply again for unredacted copies. There have been numerous instances where the interests of the applicant are evaluated against those of the protesting party or affected third parties. For further reading on UPC conclusions regarding confidentiality, see this EIP article which surveys the available case law. Keeping commercially sensitive evidence confidential can be as important to you as the maintenance and custody of your UPC claim. At the early stages and throughout proceedings we can advise on how your information will be best protected.
The written procedure includes the lodging of a statement which sets out the case for either infringement, revocation or a declaration of non-infringement. A defence to this statement should be filed, with the option to lodge a reply to the defence and a rejoinder to the reply.
Throughout this written procedure, strict deadlines and completeness are crucial. The UPC is designed to discourage “gaming” or slow-rolling; parties are expected to bring all their arguments and evidence in their allotted pleadings. If something is withheld too long, the panel may refuse to consider it. This front-loaded approach benefits a well-prepared and experienced firm; we can advise on preparing a strong statement of claim, and preparing a defence under time pressure.
The statement of claim is a crucial component of your action, as you must include all comprehensive evidence upfront which the CFI will review. In a claim for infringement for example, the required list of items is comprehensive and includes, but is not limited to, several key elements. These include the identification of the claimant, the defendant, and the relevant patent. It is also necessary to provide information regarding any prior or pending proceedings related to the patent in question. The claim should indicate the intended division and include an explanation as to why that division has jurisdiction. Additionally, the details of the claim must be outlined, including its value, the remedy sought, and the supporting facts and evidence. If any interim orders are being requested, these should be clearly indicated. Finally, a list of all documents referred to in the statement of claim must be provided, including any witness statements and applicable or requested translations.
Broadly speaking decisions of the UPC shall cover, in the case of a European patent, at least the territory of those contracting Member States for which the European patent has effect. Recent decisions have indicated that the UPC’s jurisdiction may be more expansive than initially anticipated].
Once lodged, the Registry will check to ensure that the statement of claim meets requirements and subsequently assign your claim to a panel of judges, led by a judge-rapporteur. Generally, the judge-rapporteur’s job is to make all necessary preparations for the oral hearing and ensure the procedure is fair, orderly, and efficient.
Service of the statement of claim and accompanying documents is dependent on the location of the defendant. In contracting member states, the Registry serves the statement of claim generally by post on the principal place of business, the last known place of residency, or at the listed address for their legal representatives or patent agents. Electronic service is also possible, albeit unlikely, via the defendant’s confirmed email.
If the defendant is outside the contracting member states, it may be served using the Hague Convention. In some countries this may be cumbersome and excessively long. For states not signatories to either the UPC or the Hague Convention, service may be exercised via any method as the panel permits, provided it is not in contravention with local laws. To request an alternative method of service, the Claimant must submit a reasoned written request; if the Court accepts the request, its order will specify the method, place, and date of service and the period for filing the defence.
If the statement of claim and accompanying documents are not translated to a language the defendant understands, or an official language in the serviced country, the defendant may refuse to accept service. We are well versed in organising translations of claims and can advise on when translation is necessary and if so, which documents are required to be translated.
The defendant then has a month from the date of service to object to the jurisdiction and competence of the UPC, the competence of the division assigned, and/or the language of the claim.
The defendant has three months from the date of service of the statement of claim to lodge their statement of defence. A counterclaim for revocation of the asserted patent can also be filed alongside the statement of defence. Three months is brief, especially considering that the statement of defence and revocation counterclaim must be as detailed and front-loaded as the claimant’s pleadings, yet the defendant has significantly less time to complete it. If you have received a statement of claim initiating proceedings at the UPC, it is important you act quickly to find representation and begin drafting your response.
The statement of defence should address the claimant’s statement of claim by providing reasons why the action should fail, along with evidence and witness statements that counter the claimant's evidence. A counterclaim for revocation will include several key elements, though as for the above statement of claim, the following list is not exhaustive. A counterclaim should specify the extent to which revocation is being requested and outline the grounds, supported by arguments based on fact, law, and claim construction. If the patent proprietor is not the claimant, their identity must be clearly stated. Any interim orders being sought must also be identified. Additionally, the counterclaim should be accompanied by a list of documents referenced in the statement of defence or counterclaim, including witness statements and any applicable or requested translations.
If the defendant lodges a revocation counterclaim, the claimant has two months to file a defence to counterclaim and any application to amend the patent. The defendant then has two months to file a reply to the defence to the counterclaim and any response to the application to amend. The claimant then has one month to respond to the reply to the defence to the counterclaim and a reply to the response to the application to amend. The numerous deadlines can be convoluted to follow, but they ensure an orderly and managed process leading to the oral procedure.
The response to counterclaim and subsequent responses must address the reasoning, arguments and evidence in the preceding document. The application for amendment shall include several key components including: the proposed amendments to the claims or specification in the language in which the patent was granted, along with translations into both the language of the proceedings and, where applicable, the language of the defendant’s domicile if they are located in an EU contracting state. The application must indicate whether the proposed amendments are conditional or unconditional, and if conditional, provide justification for why the number of conditional requests is reasonable in the context of the case. The response should also include an explanation demonstrating that the amendments comply with the clarity requirements of the European Patent Convention, and that the amended claims remain valid and infringed. Finally, the applicant should confirm that the amendments do not introduce new subject matter or extend the scope of protection.
If the patent is subject to other litigation or proceedings, the claimant must inform the relevant court or authority about the application to amend and provide copies of the proposed amendments. Please note that any subsequent requests to amend cannot be filed without permission from the panel. It is crucial to accurately present amendments at this stage, as subsequent proposals may be perceived as inefficient use of the court's time and could potentially be rejected. There have been a number of interesting cases relating proposals to amend at the UPC. Please have a look below if any of the following are relevant to your circumstances:
The defence to the amendment application is due to be filed within two months, and should generally set out the defendant’s position on why the proposed amendments are not allowable, and why the patent cannot be maintained as requested. This defence is likely to be similar to the counterclaim, but will also specifically address the submissions made in the proposal for amendment.
Following above exchange of pleadings, the judge-rapporteur will inform the parties of the date of closure of the written procedure and, if they decide an interim procedure is needed, set a date and time.
During the interim procedure, the judge-rapporteur will give directions for all necessary preparations for the oral hearing and must ensure that the procedure is conducted fairly and efficiently. There will be a significant amount of documentation, evidence and submission for the panel to consider, and thus during the interim procedure the judge-rapporteur may request that either party provide further clarification on their filed documents, answer specific questions or produce specific evidence. This may include holding one or more interim conferences.
Interim conferences are essentially case management conferences, and are normally held via phone or video link. They typically involve one or more of the following aims:
The necessity of an interim conference and the considerations of the panel during such a conference are entirely dependent on the specific circumstances of your claim. The interim procedure should be completed within three months of the close of the written procedure, subject to the principle of proportionality. If the judge-rapporteur does not set a date for the oral procedure during or before an interim conference, they will set one in writing to the parties with at least two months’ notice.
The interim phase is a clear example of how the UPC ensures a fair and efficient resolution: through active management, the court focuses the dispute, which benefits both sides. We find this especially helpful for clients because it reduces surprises and last-minute ambushes.
During the interim procedure, the judge-rapporteur may explore the possibility of settlement with the parties, including using alternative dispute resolution mechanisms (ADR), and may postpone the oral hearing to facilitate this.
The oral procedure is the culmination of a UPC case, where the panel hears oral arguments and sometimes oral evidence, and then delivers a judgment. By this stage, the issues are likely to have been framed by the written pleadings and potentially, by interim decisions. The hearing allows parties to present their arguments to the panel, with witnesses and experts heard only if ordered during the interim procedure. As the UPC proceedings are front-loaded and focused on written submissions, the oral hearing is brief and expected to conclude within one day. Despite the lengthy written and interim procedures, the oral hearing is still an essential part of the litigation process. It provides the parties with a final chance to clarify, emphasise, and defend their positions directly before the panel. The parties will present their oral arguments and the panel may ask questions designed to adduce admissible evidence of the parties, their experts, and their witnesses. The parties may also put questions to the opposing parties’ experts and witnesses, but only under the control of the panel. It is essential to have representation that is present and responsive to contemporary issues at the UPC, such as the necessity of objecting to procedural violations at the moment they occur in order to preserve the right to apply for a rehearing.
In some instances, the panel may announce the decision immediately at the hearing’s conclusion and provide detailed written reasons later. However, usually the judges will confer privately after the hearing to reach a decision. The panel should issue its written decision on the merits within six weeks of the closure of the oral hearing. This is much faster than many national courts where waiting months for a judgment is common.
The panel has wide-reaching discretion to grant relief, including but not limited to ordering injunctions, ordering the payment of damages, or finding a patent valid or invalid.
Although the general position is that the unsuccessful party should bear the reasonable costs of the dispute, the decision will also decide in what proportion each side will bear legal costs. The UPC has scales of recoverable cost caps based on case value. For example, if your claim was valued at €4 million, the ceiling for recoverable lawyers’ fees might be around €400,000. These scales cap costs at a level which are relatively proportionate to the claim.
An appeal against a CFI final decision can be brought within two months without permission. It is important to ensure all possible grounds are pleaded, as any grounds of appeal which are not raised within those two months are inadmissible. Most procedural orders are not appealable without permission. If the panel refuses to grant permission to appeal within 15 days, an appealing party may request discretionary review from the Court of Appeal itself. Such a review may be rejected, but generally will be approved where the decision involved legal issues that were subject to differing interpretations by other UPC courts and where the appeal would serve a legitimate interest of the parties. New facts are admissible only if they could not reasonably have been presented during the first instance proceedings. The Court of Appeal may disregard any new facts if it thinks them irrelevant or unjustified. Appeals do not have suspensive effect unless the Court of Appeal orders otherwise, and procedural appeals do not stay the main proceedings.
Navigating the UPC can be complex, but our team is here to make it seamless for you. With our extensive experience and strategic approach, we ensure that your claims are handled efficiently and effectively.
If this overview of the UPC was of interest to you and you would like tailored advice on a claim, please contact EIP’s Integrated UPC team to see what we can help with: