A contribution from Dr. Laura Katharina Woll, LL.M.*
Overview: The UPC and patent protection in Europe
The new Unified Patent Court (UPC)[1] became operational on June 1, 2023 – and it is fundamentally reshaping the European patent landscape.
A patent is an exclusive right granted for an invention that offers a technical solution to a problem,[2] which is not the case if the proposed solution is neither new nor involves an inventive step. Traditionally, patents are territorial rights, applying solely within the country where they are filed and granted.
However, in pursuit of the objectives outlined in Art. 3 para 3 of the Treaty of the European Union (TEU), especially the establishment of an internal market, the European Union aims to achieve uniform patent protection across this market. This endeavour seeks to eliminate barriers posed by national borders in patent protection, unifying the patent system to enhance accessibility, reduce costs, and ensure legal certainty.
After the Court of Justice of the European Union found in its Opinion 1/09 from 2011[3] that the draft agreement on the creation of a unified patent litigation system was incompatible with the Treaties, efforts shifted to enhanced cooperation under Article 20 TEU.[4] Enhanced cooperation allows for European projects that do not require the participation of all Member States of the European Union, promoting the objectives of the Union and strengthening the integration process.[5]
The outcome and a very successful example of an enhanced cooperation is the Agreement on a Unified Patent Court (UPCA)[6], which is currently ratified by 17 of the 27 EU Member States – granting the UPC jurisdiction in patent infringement and validity matters in these 17 Member States. The entry into force of the UPCA more than 10 years after the ECJ’s decision is a remarkable event in the European integration process and a pivotal moment for the protection of intellectual property for companies worldwide.
Before Regulation (EU) No. 1257/2012 and the UPCA[7] introduced the so-called Unitary Patent (UP), only the European patent (EP)[8] as a “bundle” of national patents in the 27 EU Member States and other countries such as the UK, Switzerland, or Turkey, existed. Today, with the Unitary Patent, it is possible to obtain patent protection in up to 17 EU Member States at once by filing a single application with the European Patent Office (EPO)[9] in Munich – with Ireland and other countries possibly joining the UPC system soon.[10]
The UPC deals with both the infringement and validity of Unitary Patents and conventional European “bundle” patents at the same time, thereby creating a fast and cost-effective single enforcement and invalidation mechanism for patents in the Member States that have ratified the UPCA.
Infringement proceedings against alleged patent infringers are brought before the UPC Local Divisions Düsseldorf, Munich, Hamburg, Mannheim, Paris, Vienna, Brussels, Copenhagen, Helsinki, Milan, The Hague, Lisbon, Ljubljana, or the Nordic-Baltic Local Division (with several seats in Stockholm, Riga, Tallinn, and Vilnius). Revocation proceedings – in which usually competitors seek to have patents declared invalid – are initiated at the Central Divisions in Paris, Munich, or (as of summer 2024) Milan, depending on the field of technology of the relevant patent.
The Court of Appeal as the second instance has its seat in Luxembourg. All Court panels are composed of legally and technically qualified judges (e.g. physicists, biochemists etc.) and are multi-national, with judges from several participating Member States.
The UPC in Europe – a new global gold standard?
The aim of the UPC is to become the new global gold standard.[11] As noted above, patents in Europe have traditionally been enforced and challenged on a country-by-country basis, with the possibility of inconsistent national judgements, different evidentiary standards and timelines or even bifurcation (i.e. separation) between infringement and invalidity proceedings, as well as limited potential for large damages awards. The so-called bifurcation is e.g. the standard in Germany: infringement proceedings and invalidation proceedings are strictly separated.[12]
With the UPC, however, decisions will have effect in all participating EU Member States, making it possible to challenge or enforce patents in a geographically and economically large market in a single court case. Furthermore, the Court is prepared to decide on validity and infringement in a single action (although a bifurcation would be possible, this is, in principle, not envisaged – which is confirmed by early UPC decisions[13]).
Particularly innovative is the speedy procedure with only one year until trial: in infringement proceedings, the defendant has only three months to file a complete defence, whereas in revocation procedures the time period is even shorter at only two months. This puts the UPC ahead of even the fastest ways to obtain court decisions in other parts of the world, e.g. in the US, and makes it an interesting forum choice for claimants who want to put pressure on their competitors.
A successful start and first key cases of the UPC
Within nine months of its opening, more than 200 cases were filed with the UPC, including more than 80 infringement actions, more than 25 revocation actions and more than 10 applications for provisional measures (i.e. preliminary injunctions). Most cases have been filed in Munich, followed by Paris and Düsseldorf.[14]
The new possibility to obtain injunctions not only quickly, but for a large European territory and before commencing any infringement action makes the UPC a particularly compelling option for patent owners. Early decisions are instructive and show that the UPC is prepared to reward plaintiffs who present a strong case with swift and well-founded decisions: in myStromer AG v Revolt Zycling AG,[15] for example, the UPC issued an ex parte injunction within a couple of hours. In this case, after sending a cease-and-desist letter to Revolt Zycling AG, plaintiff myStromer AG filed for a preliminary injunction against the alleged infringer within the same day. Revolt Zycling AG then filed a protective letter with the UPC,[16] arguing that it had not infringed the patent. The Düsseldorf Local Division nevertheless granted the preliminary injunction with immediate effect within a few hours, showing that it can react very quickly in urgent cases.
Another highly important case is 10X Genomics, Inc. v NanoString Technologies, Inc.: While in the first instance the Local Division in Munich granted a preliminary injunction after an oral hearing in September 2023 on the basis that there was “sufficient certainty” that NanoString had infringed the asserted patent claims, and that these claims were valid, the Court of Appeal in February 2024 overturned the first instance decision in a landmark decision.
By ruling, contrary to the Local Division’s assessment, that there was no sufficient likelihood of the patent being found valid in the main proceedings (due to a lack of inventive step), the Court allowed NanoString to return to most European markets. With this first substantive decision in appeal proceedings, the Court is beginning to set uniform standards, thereby increasing legal certainty in both infringement and revocation proceedings.
Specifically, the Court of Appeal emphasized that – in accordance with what is known from well-established European case law, e.g. in Germany – that the patent claims are the starting point and decisive basis for determining the scope of patent protection: while claim construction should always consider the patent specification and drawings, there will be no protection for what is disclosed only in the specification or drawings without any basis in the patent claims.[17]
Interestingly, in this respect the UPC is diverging from the EPO’s approach, which considers patent claims normally in isolation and refers to the specification only where the claims are ambiguous.[18]
In conclusion, with this landmark decision, the UPC Court of Appeal has shown that it is committed to actively guiding the development of UPC law and patent practice throughout the UPC territory, ensuring the necessary flexibility while providing legal certainty. It remains to be seen how the law will further develop at the UPC.
In any event, the long-awaited start of the UPC and its first key cases represent a huge step towards internal market integration in patent law and a successful example of enhanced cooperation between EU Member States – thereby hopefully setting a favourable precedent.
*Dr. Laura Katharina Woll, LL.M., is part of the IP litigation and dispute resolution team of McDermott Will & Emery in Düsseldorf (more information on the UPC can be found here: Unified Patent Court Resource Center – McDermott Will & Emery) and alumna of the Europa-Institut.
[1] The Unified Patent Court | Unified Patent Court (unified-patent-court.org).
[2] See for more information Patents (wipo.int).
[3] Opinion of the Court of 8 March 2011 (Opinion 1/09).
[4] Council Decision of 10 March 2011 (2011/167/EU).
[5] Haedicke/Timmann/Haedicke, PatR-HdB, § 1 Rn. 49.
[6] UPCA, OJ 2013/C 175/01, EUR-Lex – 42013A0620(01) – EN – EUR-Lex (europa.eu).
[7] OJ L 361/1, Regulation – 1257/2012 – EN – EUR-Lex (europa.eu), see especially Article 18 para 2 of the Regulation.
[8] Based on the European Patent Convention, a multilateral international treaty, see European Patent Convention | Epo.org.
[9] For more information see Homepage | Epo.org.
[10] However, Ireland recently postponed the referendum, see: Government defers date for referendum on a Unified Patent Court – DETE (enterprise.gov.ie) (29.04.2024).
[11] See, for example, https://www.epo.org/en/applying/european/unitary/upc (29.04.2024).
[12] Mes, Patentgesetz Gebrauchsmustergesetz, 5th ed. 2020, § 81 margin no. 6.
[13] See for example the decision of the Local Division The Hague of 15 February 2024, UPC_CFI_239/2023, page 2.
[14] See Case load of the Court_end Feb 2024_clean_final.pdf (unified-patent-court.org).
[15] UPC_CFI_177/2023, No. 525740/2023. For more information on the case see Legal Lens on the Unified Patent Court | January 2024 – McDermott Will & Emery (mwe.com).
[16] Based on Rule 207 of the Rules of Procedure UPC, available here.
[17] See UPC_CoA_335/2023.
[18] See e.g. the EPO decisions T 23/86, T 223/05, T 1404/05, T 1127/16.
This article is not intended to be legal advice. Its purpose is to provide general information. The opinions expressed are those of the author and do not necessarily reflect the views of her employer, clients, or any of their respective affiliates.
Suggested Citation: Woll, Laura, The Unified Patent Court – a New International Court based on an Enhanced Cooperation between EU Member States, jean-monnet-saar 2024.
DOI: 10.17176/20240429-152425-0
Funded by the Deutsche Forschungsgemeinschaft (DFG, German Research Foundation) – Project No.: 525576645