Prior to claim

Strategic considerations

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.

Jurisdiction

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.

Division

The UPC comprises a Court of First Instance (“CFI”), the Court of Appeal and the Registry. Focusing on the CFI: the CFI contains a central division and local/regional divisions.

Actions for revocation or non-infringement are generally brought before a central division. Each central division hearing will be presided over by two legal and one technical judges. The three central divisions, Paris, Munich and Milan have differing subject matter speciality, as follows:

Division	Specialisation
Paris	Performing operations, transporting; Textiles, paper; Fixed constructions; Physics; Electricity; Supplementary protection certificates;
Munich	Chemistry, metallurgy, without supplementary protection certificates; Mechanical engineering, lighting, heating, weapons, blasting;
Milan	Human necessities, without supplementary protection certificates.

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.

Language

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.

Timing

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.

Preparing evidence

Proceedings before the UPC are divided into three main stages: the written procedure, the interim procedure, and the oral hearing. Also, there are two post-hearing phases addressing damages and costs. Before initiating the written procedure, it is essential to thoroughly prepare your evidence. Unlike legal systems in the UK and other European jurisdictions, the vast majority of your claim must be presented at the outset.

The CFI relies heavily on written documents, and requires parties to present their full case as early as possible. This demands early, and careful consideration of the facts needed to support your case and how to prepare the necessary evidence. In the UPC, this extends to anticipating facts which are likely to be contested and either providing supporting evidence upfront or indicating what further evidence will be submitted to prove it. We can help identify key documents early, as it is important if they need to be referenced by or included in the original pleading. These documents may also require translation, depending on the language of proceedings (see above).

Fact / disclosure / discovery evidence

Fact and witness evidence should be prepared for submission with the statement of claim (see below), prior to the initiation of the written procedure. Such evidence may include documents, requests for information, comparative tests or experiments, expert reports, recordings, and affidavits as necessary to support your claim. Written evidence is generally provided in a signed document with a statement of truth declaring their relationship with the parties and any potential or actual conflicts which may affect their impartiality. Any witnesses may be ordered to attend and give evidence at the oral hearing, thus it is important to prepare witnesses for the possibility of questioning which we can assist with.

The UPC does not have a formal disclosure/discovery system where the parties exchange documents and information. However, in the written and interim stages either party can request the panel to order the counter-party to produce evidence under their control that is needed to substantiate the requesting party’s case. This could include confidential information of the counter-party, which would be subject to a confidentiality regime. We have experience of collaboration with the respondent’s representatives on these confidentiality regimes, we understand the balance that is required between the parties and court to the proceedings having access to key documents as well as the need to keep commercial information confidential.

A party may also lodge an application before proceedings have been initiated for an order to preserve evidence (a “saisie”) if there is a risk evidence may be lost or destroyed. A saisie can be ordered (and usually is ordered)without notice to the defendant if delay could cause irreparable harm or if there is a risk of evidence being destroyed, but there are protections in place; the court may require the applicant to lodge financial security before making the order, to recompense any damage caused by the execution of the saisie. The preparation and strategic use of available procedural tools are critical to effectively presenting and protecting your claim before the UPC. For more information, see the following EIP articles discussing discovery:

Author	Case	Summary
Tom Brazier	C-KORE v Novawell	The Paris court clarified how companies can challenge or review evidence preservation orders, especially when they are issued without prior notice to the accused.
Darren Smyth	Oerlikon Textile v Himson Engineering	The court granted urgent orders allowing a company to collect evidence at a trade fair in Milan, showing how quickly and effectively the court can act to prevent loss of proof in patent disputes.
Darren Smyth	Progress Maschinen v AWM & Schnell	The Milan court allowed a company to inspect its competitor’s premises to gather more evidence of patent infringement, due to concerns that the evidence might be hidden or destroyed.
Sam Meacham	Data Detection Technologies Ltd v Doytec Automation Ltd	At a Dutch trade fair, DDT suspected Doytec of copying its seed counting machine. The court allowed DDT to seize the machine and documents without warning Doytec, to prevent evidence loss.

Expert evidence

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.

Confidentiality

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.

Written Procedure

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.

Filing of statement of claim

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].

Examination by Registry

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

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.

Preliminary objections

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.

Statement of defence and counterclaim for revocation

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.

Response to defence and counterclaim, application to amend, and further pleadings

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:

Author	Case	Summary
Darren Smyth	Meril Italy v Edwards Lifesciences	The court rejected a further amendment request in a revocation claim, emphasizing procedural limits and choosing to escalate the objection to the full panel, which ultimately dismissed it.
Darren Smyth	Carrier Corporation v. BITZER Electronics	The court ruled that patent claims not challenged in a revocation action cannot be amended, reinforcing that amendments must be directly linked to the scope of the invalidity proceedings.

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.

Closure of the written procedure

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.

Interim Procedure

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*

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:

• to clarify the positions of the parties;
• to establish a clear schedule of proceedings and a date for the oral hearing;
• to explore alternative dispute resolution or settlement;
• to consider and issue orders relating to the production of further pleadings, evidence, experiments and inspections, and;
• to make any other decision or order deemed necessary for the oral procedure.

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.

Settlements

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.

Oral Procedure

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.

Damages Procedure

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.

Relief

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.

The UPC is open to issuing both preliminary and permanent injunctions, and has demonstrated a readiness to order preliminary injunctions even on an ex parte basis, where the defendant is not heard. In making its decision, the panel evaluates factors such as the patent’s validity, the likelihood of infringement, and the potential impact on both the claimant and the alleged infringer.

With respect to damages, the UPC can handle damages assessments separately from the main infringement decision. Often, the court will first decide the question of infringement, validity and the appropriate remedy and, if damage are found to be an appropriate remedy then move to determine the amount of damages due. The claimant must file a separate action for damages within one year of the final decision, such proceedings would focus solely on the amount of compensation and would generally be calculated on lost profits and unjust enrichment, or on the basis on a reasonably royalty for use of the patent.

Cost consequences

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.

Appeals

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.