The Unified Patent Court: emerging trends just under a year in

Germany is among the leading jurisdictions for patent litigation in Europe, popular with rights holders from a variety of sectors, including life sciences, automotive, telecommunications and consumer goods. The injunction is granted as of right and owing to bifurcation, validity and infringement are addressed in different fora. This considerably shortens the time period from the filing of an infringement complaint to the first instance decision. A drawback, of course, lies in the fact that neither a judgment issued by a German court nor, indeed, any other national court in Europe has cross-border effect. An injunction granted by a German court is only enforceable in Germany.

The legal landscape for patent litigation significantly changed when the Agreement on a Unified Patent Court 2013 came into effect and the new court started its work in June 2023. Among other things, the UPC has jurisdiction for infringement and revocation actions regarding so-called unitary patents as well as regular European patents. Depending on the number of countries in which a given European patent has been validated, an injunction issued by the UPC is enforceable in up to seventeen EU members states, including Germany, France, the Netherlands and Italy. However, where there is opportunity there is also risk, and if a defendant retaliates with a counterclaim for revocation, the patentee could potentially lose protection in up to seventeen EU member states. Accordingly, in the run up to 1 June 2023, many discussions centred around the question of how popular the new patent litigation system would prove, and which litigants from which industries would use the UPC.

Just under a year in, we begin to see emerging trends. With the court having received just under 300 cases, the UPC is much more popular than expected, and is used by patentees from a variety of industry sectors. Contrary to what some commentators predicted, many cases have a pharmaceutical or bio-/medtech background, and as of April 2024 more than 28% of all reported cases related to bio- and medtech patents. Following that we see the telecommunications sector, and there is a significant number of cases relating to mechanical engineering and consumer goods. With regard to places of jurisdiction, it is striking to see how many cases were brought in Germany. In particular, the vast majority of infringement cases were filed with the four local divisions in Munich, Düsseldorf, Mannheim and Hamburg. These included proceedings on both the merits of the claims and preliminary injunction (“PI”) cases.

While there is still some backlog to deal with, the number of reported decisions continually grows. In addition, much of the information discussed by interested parties comes from the blogsphere and therefore has to be taken with a pinch of salt. A significant number of cases related to preliminary proceedings. In one matter concerning a milk frothing machine, the Viennese local division denied a PI because there was no infringement (UPC, CFI 528738/2023). By contrast, both the Düsseldorf local division (pedelec case, UPC CFI 525740/2023) and the Munich local division (genomics case, UPC CFI 2/2023) were prepared to grant injunctive relief, although the defendants had seen the attacks coming and filed so-called protective letters. They did this to no avail. In the pedelec case, the Düsseldorf division issued the injunction shortly after the filing of the PI application and without a prior hearing (ex parte). In the genomics case, whilst the defendant had their day in court, in first instance they failed to successfully to call into question infringement or validity. That ground-breaking decision was subsequently quashed by the Court of Appeal, and the legal world is waiting to see the reasoning.

Given that the UPC is still in its infancy, it remains difficult to make any predictions. That said, this is the season of the PI, and with all due caution it seems that the UPC judges do not shy away from granting preliminary relief. Those who anticipate a dispute are well-advised to consider the new court when they prepare a defence strategy. Preparation is key, not only because the UPC Agreement provides for fast proceedings. Firing a pre-emptive strike will only help if the defendant presents solid non-infringement and invalidity arguments in its protective letter. Furthermore, in both the pedelec and genomics matters mentioned above, the defendants were ordered to make penalty payments for failure to comply with the PI in question. Specifically, in the pedelec case it took the defendant some hours to dismantle a booth at a trade show where it presented the allegedly infringing bicycles, demonstrating again why preparation is paramount. Companies that see a potential attack coming should therefore take steps to safeguard compliance if a disadvantageous ruling cannot be avoided.

Read more in our global trade secrets and patents series:

• A changing landscape for AI patenting in the UK
• Standard Essential Patents: key developments for SEPs and FRAND commitments
• Supplementary Protection Certificates (SPCs): recent developments in EU case law
• The limitation of patents in ongoing revocation procedures in Spain
• What’s plausible? The UK Court of Appeal revisits the ever shifting concept
• Navigating the New Frontier: AI Patentability at the European Patent Office
• Global trade secrets update