Reyda IP Attends Unified Patent Court (UPC) First Year Review Conference: Key Discussions and Future Outlook

On September 26, 2024, Simin Dai, partner at Reyda IP, participated in the "Unified Patent Court (UPC): First Year Review" conference held in Strasbourg and online. This event brought together experts and practitioners in the field of patent law to fully review the operations of the UPC since its establishment, and to explore issues related to procedural law, patent law practices, and the role of technical judges. Here are the key highlights from the conference.

The session was opened by a keynote address from Florence Butin, President of the UPC Court of First Instance. She provided an overview of the UPC's operations, noting that dedicated standing judges handle urgent cases and that processing infringement and revocation actions at local divisions has become standard practice. When there are parallel independent revocation actions, bifurcation may be used. She pointed out that making early decisions on bifurcation can help improve case efficiency, and suggested efforts to harmonize patent interpretation across different divisions.

Next, Ina Schreiber (Patent Attorney, Plasseraud) and Konstantin Schallmoser (Lawyer, Preu Bohlig) discussed the procedural law framework of the UPC, covering issues such as language selection, extending claims, filing auxiliary requests with amended claims. They emphasized that amendments to unchallenged claims are inadmissible, and requests lacking explanations will be deemed inadmissible. Moreover, they recommended that the number of auxiliary requests should correspond to the number of nullity attacks. As for time extensions, they will only be granted in exceptional cases, and only if the requesting party provides evidence demonstrating the impossibility or difficulty of respecting the original time limit. The standard for preserving evidence includes proof of patent validity (e.g., proof of ownership and the absence of EPO opposition) and demonstration of infringement (e.g., photographs of the allegedly infringing machines, photos of the product from the alleged infringer’s website). Additionally, the criteria for ex parte proceedings include urgency and the risk of evidence destruction, such as the risk of digital data being concealed or erased.

Following that, Pierre Véron, one of the "fathers" of the UPC, presented on UPC jurisdiction, territorial jurisdiction, and change of venue. He recommended a full-text search engine for UPC decisions and introduced the "Carve-Out" mechanism, which allows the patent proprietor to exclude certain countries from a patent infringement action. However, this does not prevent the defendant from counterclaiming for revocation in all member states.

Edouard Treppoz, Professor at the University of Paris 1 Panthéon/Sorbonne, then discussed how to determine the applicable law to the merits in UPC cases. He emphasized the importance of selecting the right legal framework based on the specific circumstances of each case to ensure consistency in procedural and substantive law, which is crucial for future patent litigation.

Giovanni Pricolo, Chairman of the EPO’s Technical Board of Appeal and a permanent technically qualified member of the Enlarged Board of Appeal, then spoke about the relationship between UPC and EPO proceedings. He noted that the standard EPO opposition process typically takes 13 to 23 months, while accelerated opposition can be completed in 8 months, providing a faster route for resolving patent invalidity disputes. He also mentioned that UPC cases generally take about a year to conclude, and given the high litigation costs, the EPO’s accelerated opposition process may become an attractive alternative in the future.

In the session on the role of technical judges, Frank Macrez (Professor at CEIPI) outlined the code of conduct for technical judges and how to avoid potential conflicts of interest. He stressed that technical judges must maintain independence when handling complex technical cases and ensure they are free from external influence. Andrea Perronace, a UPC technical judge, further explained the practical work of a UPC technical judge. In particular, he highlighted that claim interpretation should not be confined to the literal wording of the claims and that it is necessary to refer to the description and drawings to assist in interpreting the claims, but without expanding the scope of the claims beyond what is described in the specification and drawings.

Andreas Dilg further explored substantive patent law, focusing on claim construction, assessment of inventive step, and determining the scope of protection. He pointed out that the French divisions of the UPC strictly follow the problem-solution approach used by the EPO, whereas the German divisions tend to follow their own "Anlass" method. Under this method, once the novelty threshold is met, inventiveness is assumed unless there is obvious evidence to the contrary. To regard the patent-based solution as obvious, additional prompts, suggestions, hints, or technical clues are required.

Next, Anne-Charlotte Le Bihan (Lawyer, TwoBirds) discussed preliminary injunctions and the burden of proof. She explained that in granting a preliminary injunction, the court may require the applicant to provide reasonable evidence to satisfy the court with a sufficient degree of certainty that the patent is valid, and that the patent right is being infringed, or that such infringement is imminent. She also addressed the use of ex parte and inter partes preliminary injunctions and explained when and how to use protective letters to make a defense.

Finally, the conference concluded with a panel discussion featuring Dr. Peter Tochtermann (Presiding Judge of the UPC Mannheim Division), Anne Julia Meinel (Roche Diagnostics GmbH), and Cordula Schumacher (President of the European Patent Lawyers Association). They provided insights from the perspectives of judges, industry, and lawyers, reflecting on the UPC's first year in operation and discussing the challenges and opportunities ahead.

This conference provided Reyda IP with invaluable insights into the UPC’s procedural practices, its interaction with the EPO, and important issues around claim interpretation and the assessment of inventive step. We are committed to applying these insights to develop the most effective patent application and litigation strategies for our clients, ensuring they remain competitive in future patent litigation.