Unified Patent Court: The cases, the numbers and what the future holds

In its first year, uptake of cases at the Unified Patent Court has surpassed most expectations. Darren Smyth of EIP delves into the facts and figures behind the headlines, with some surprising results.

The Unified Patent Court opened for litigation on June 1, 2023, and has seen a healthy number of cases in its first year.

According to statistics released by the court, there were 134 infringement actions (63 of which attracted counterclaims for revocation), 39 standalone revocation actions, and 32 actions for provisional measures.

The parties represent a range of entities, from multinationals with an extensive litigation record in Europe, to SMEs and even individuals who appear to be litigating for the first time.

It seems that entities of all types see the UPC as a viable and accessible route to litigation. In addition, litigants come from across the globe including the US and Asia, and are far from restricted to European entities.

Subject matter inequality

The subject matter of the patents being litigated is quite unequally distributed. The highest numbers of cases are in classes G and H (physics and electricity), followed closely by class A (human necessities), then B (performing operations, transporting), and C (chemistry).

There are very few cases in any of classes D (textiles, paper), E (fixed constructions), and, perhaps most surprisingly, F (mechanical engineering, lighting, heating, weapons, and blasting).

There have been many cases in the life sciences and medical device sector viewed widely, including the 10x Genomics cases against Nanostring and Curio Biosciences; various actions between Amgen and Sanofi /Regeneron related to EP3666797 (concerning a monoclonal antibody for controlling cholesterol); and actions between Roche Diabetes Care and Tandem Diabetes Care related to drug delivery systems.

However, the UPC system has not yet been used for the classic pharma scenario of an originator pharmaceutical company seeking to prevent market entry of generics. This may be because the post-authorisation route to market for a generic differs according to national pharmacy systems, making it hard to tailor a single UPC action when the factual situation in each participating country may be significantly different.

Divisional differences

The distribution of cases in the local/regional divisions has been very unequal. If infringement takes place in many European countries, a patentee can bring an infringement action in any local division where infringement is alleged to occur.

Since a patentee is unlikely to choose the UPC if the geographical scope of infringement is narrow, this means that for most UPC cases the claimant has a wide choice of division in which to bring an infringement action.

By far the majority of cases have been brought in one of the four German local divisions, of which Munich has been the most popular (54 cases), followed by Düsseldorf (27 cases), then Mannheim (16 cases) and Hamburg (seven cases).

The Paris local division has only attracted 10 cases. Other divisions have only a small number each—Milan (four cases), The Hague (four cases), Brussels (two cases), Helsinki, Vienna and Copenhagen (one case each); while the Nordic-Baltic regional division has six cases.

Lisbon and Ljubljana both have yet to see a single case. It would appear that claimants are electing divisions where the judges have a known track record of deciding patent matters, in order to mitigate the inherent uncertainty of navigating a new court system.

However, it may be difficult for the UPC to establish its identity as a distinctive and pan-European court if the cases are concentrated in a minority of divisions, in which the panels are dominated by local judges (in German and French local divisions, the default panel is two local judges and one judge from another country).

Relatedly, the language of an infringement case can (generally) be chosen by the claimant from the language of the country in which the local division is situated, or English. In the early cases, German predominated, but it is likely that these cases were already prepared in German since it was only announced at the last minute that the German divisions would (like all the other divisions) allow English to be chosen as a language of proceedings.

In the later-filed cases, the proportion of English rises. In quite a few cases the defendant has requested a language change into English, and this has often (but not always) been allowed.

Provisional measures

In a significant number of cases, the claimant has sought provisional measures, usually a provisional injunction. There have been 26 applications for provisional measures (compared with 134 infringement cases in total). Most have been sought in Munich (13 cases) or Düsseldorf (five cases).

From the decisions we have seen, many of these have been unsuccessful, usually because the court has had reservations about the validity of the patent or its infringement.

In one case involving bicycle manufacturers (myStromer v Revolt Zycling) the provisional injunction was granted ex parte and with only a cursory consideration of the validity of the patent being asserted.

More typically, the court has decided provisional injunction applications on an inter partes basis (hearing from the defendant as well as the claimant) and has conducted a rather detailed (albeit necessarily preliminary) evaluation of the likely validity of the patent and whether it is infringed.

The Rules of Procedure do not mandate such an evaluation, and it remains unclear what determines whether it will be carried out. However, the decisions so far suggest that it will usually be difficult to obtain a provisional injunction without a convincing showing of both validity and infringement at the provisional stage.

10x Genomics secured a provisional injunction against Nanostring in relation to one patent, but this was overturned by the Court of Appeal which disagreed with the first instance panel and considered that the patent was likely invalid. In relation to another patent the injunction was refused at first instance (because of lack of urgency and doubts about the validity of the patent).

10x Genomics also secured a provisional injunction against Curio Biosciences, although of narrower scope than was sought.

A provisional injunction was secured ex parte, and confirmed on review, by Mammut Sports against Ortovox Sportartikel in an action concerning location devices for avalanche victims.

On the other hand, provisional injunctions were refused in a number of cases, such as SES-imagotag v Hanshow Technology (relating to electronic labels); and CUP&CINO Kaffeesystem-Vertrieb v Alpina Coffee Systems (relating to coffee making machines). In both cases the court was not convinced that the patent was infringed.

Evidence-gathering

In contrast to provisional injunctions, requests to inspect premises and gather evidence have generally been granted. This is unsurprising, since injunctions represent a sanction on the defendant, while evidence-preservation orders are only mildly disruptive—their purpose is to assist the claimant in gathering evidence to prove their case, not to punish the defendant.

It is probably also unsurprising that most such requests have been filed in local divisions in countries that already have a similar established system for gathering evidence (Paris, Milan, Brussels); in fact only one has been filed in a country lacking such a system (Munich).

It remains rather unclear how an inspection order would practically be carried out in a country that did not already have an established mechanism for execution.

Overall, the uptake of the UPC has surpassed most expectations, and the judicial panels in Munich and Mannheim have already been expanded to keep up with demand.

In the next few months it is expected that a number of first instance decisions on the merits will be issued, and these will be critical in whether potential users’ confidence in the system is maintained.

Early indications are that potential litigants find the system a useful addition to the European patent litigation landscape.

Darren Smyth is a partner, UK and European patent attorney, design attorney, and UPC representative at EIP in London.