Trends emerging from UPC indicate growing divergence from EPO practices

The UPC is an innovative multinational court set to handle disputes related to European patents across 18 EU Member States, impacting a population of approximately 400 million. With the introduction of the unitary patent (UP), providing single patent protection across these jurisdictions, the UPC streamlines patent enforcement and signifies a historic shift in legal governance. For the first time, EU Member States have transferred national jurisdiction in certain fields to a collective entity, establishing a pan-European court system for patent disputes. This evolution signals a new era of collaboration and uniformity, reshaping the management and enforcement of intellectual property within the European Union.

Given its history as the primary venue for patent litigation in Europe, Germany unsurprisingly is at the forefront of this new system, hosting four local UPC divisions and one part of the central division. The distribution of UPC cases reflects Germany’s dominance in European patent litigation, with German patent law firms leading claimant actions and most injunctions and decisions handled at German local divisions. This emphasises Germany’s importance as a litigation venue for protecting innovation.

Discussion points

• Recap: structure of the UPC, panel of judges and country coverage
• Launch of the UPC and case statistics
• Infringement actions and counterclaims for revocation
• Insights from first case law on procedural and substantive issues
• Language of proceedings
• Number of Auxiliary Requests
• Public access to court files and register
• Preliminary Injunctions and Protective Letters
• Relevance of Prosecution History
• The UPC’s first decisions on SEPs and FRAND

Referenced in this article

• Curio Bioscience v. 10x Genomics (UPC CoA 101/2024 of 17 April 2024)
• Ocado v. Autostore (UPC CoA 404/2024 of 10 April 2024)
• NanoString Technologies v. 10x Genomics (UPC CoA 335/2023 of 26 February 2024)
• G 1/24 EPO EBoA Referral Heated Aerosol
• Philips vs. Belkin (UPC_CFI_390/2023)
• VusionGroup v. Hanshow (UPC CoA 335/2023 of 13 May 2024)
• SES-imagotag SA v. Hanshow (UPC_CFI_292/2023)
• 10x Genomics v. Curio (UPC_CFI_463/2023)
• Ortovox v. Mammut (UPC_CFI_452/2023)
• myStromer v. Revolt (UPC_CFI_177/2023)
• Ortovox v. Mammut (UPC_CFI_452/2023)
• Meril vs. Edwards Lifesciences (UPC_CFI_255/2023)
• Amgen v. Regeneron/Sanofi (UPC CFI 1/2023 and 14/2023 of 12 July 2024)
• Panasonic v. OPPO (UPC CFI 210/2023 of 22 November 2024)

Structure of the UPC and judges

The UPC comprises a court of first instance, a court of appeal and a registry. The court of appeal is in Luxembourg and is presided over by Klaus Grabinski, a former judge of the German Federal Court of Justice. The court of first instance comprises a central division and several local and regional divisions. The central division primarily handles stand-alone revocation actions, while the local and regional divisions manage the majority of patent infringement actions, often including counterclaims for revocation.
 

Since the central division is mainly concerned with revocation actions, its panels comprise a technically qualified judge in addition to two legally qualified judges. This follows the German tradition of having technically qualified judges hear revocation actions. The technically qualified judges are allocated from a central pool on a case-by-case basis. All of the UPC’s panels are multinational. The panels of the local and regional divisions that hear infringement actions consist of three legally qualified judges, who – upon request of the parties or the panel – are usually joined by a technically qualified judge, especially when a counterclaim for revocation has been lodged.

All in all, 117 UPC judges have been appointed: 42 legally qualified judges and 75 technically qualified judges. Some of Germany’s finest patent judges have transitioned to the UPC. The technically qualified judges are also highly experienced national patent practitioners or judges ensuring the delivery of high-quality decisions. By far the largest number of legally and technically qualified judges (over one-third) come from Germany. So far, the approach to assessing patent infringement and validity at the UPC’s local divisions in Germany is similar to what is known from German national patent courts. It comes as no surprise that the decisions of the local divisions have a local flavour to them with slightly diverging views, and it remains to be seen to what extent the Court of Appeal will streamline UPC case law over time.

Country coverage of the UPC and the UP

At the time of writing, 24 out of 27 EU Member States have agreed to participate in the UPC and UP scheme. However, currently the UPC territory extends only to 18 of these countries due to still outstanding ratifications (see Figure 2). The 18th member state to join was Romania, where the UP/UPC system took effect on 1 September 2024.

A UP covers all participating countries that have ratified the UPC Agreement at the time of the UP’s registration. The UPC has jurisdiction over infringement and validity of both unitary and traditional European patents within these jurisdictions, with the exception that traditional European patents – during a transitional period of seven years – can be “opted out” from the exclusive jurisdiction of the UPC by filing an opt-out request. Non-EU countries like Norway, Switzerland and the United cannot join the UP or UPC and will continue to require separate validation, maintenance and enforcement. While the new UP/UPC framework aims to simplify patent protection across Europe, there is still considerable complexity in navigating the European patent landscape.

Launch of the UPC and case statistics

Since its launch on 1 June 2023, the UPC has received over 500 cases, indicating strong stakeholder engagement. Confidence in the court appears to be growing, evidenced by declining opt-out rates and an increase in withdrawals of initial opt-outs. Many claimants from non-EU states are also utilising the court as part of their international litigation strategies. As more and more decisions are issued, key factors influencing attack and defence strategies crystallise.

Infringement actions and counterclaims for revocation

At the end of September 2024, 192 UPC infringement actions had been filed, distributed across various local divisions. The Munich local division has been the most active, receiving 70 infringement actions, followed by Düsseldorf with 42, Mannheim with 25 and Hamburg with 14. This means that almost 80 per cent of all first instance UPC cases have been filed with one of the four German local divisions. In response to the high case load, Munich bolstered its capacity by opening up a second panel, the first being headed by Matthias Zigann and the second by Ulrike Voß, who also heads the Munich central division. Both are experienced German patent infringement judges that now work full-time at the UPC. Most other first instance UPC judges only work part-time for the UPC and have retained their previous national judicial positions. Paris, while a central hub, has seen 11 actions, with other divisions like The Hague (10), Milan (seven) and the Nordic Baltic regional division (six) also contributing to the tally.

In addition to infringement claims, there have been 212 counterclaims for revocation attached to 103 infringement actions. This leaves 89 infringement actions without counterclaims, possibly due to parallel revocation actions, EPO oppositions or individual case factors.

Provisional measures

The UPC has received 49 applications for provisional measures, which include requests for preliminary injunctions, preserving evidence and orders for inspections. This indicates that parties are proactively seeking to safeguard their interests by requesting interim relief.

Stand-alone revocation actions

The UPC has received a total of 45 stand-alone revocation actions. Case allocation is governed by IPC class and, so far, the Paris central division, responsible, among other things, electronics and physics, dominates this area, accounting for 37 of these actions. The Munich central division has only seen five cases, likely due to many patents in the chemistry and life sciences sectors having been opted out from the UPC jurisdiction. The Milan seat of the central division, having only opened its doors on 27 June 2024, has so far only seen three revocation actions. Being responsible for, among other things, pharmaceuticals and medical devices, its case load can be expected to increase in the next few years.

Overall, the first instance case statistics not only underscore the immediate activity at the UPC but also reflect the evolving dynamics of UPC patent litigation in Europe. As the court continues to establish its authority, these figures provide a valuable insight into how stakeholders are engaging with the new judicial framework. 

It is to be noted that the UPC, so far, meets its goal to have a first instance decision issued within roughly 12 months from filing the complaint. This puts significant time pressure on the parties and has a major impact on the admissibility of later submitted facts and arguments. As a result, so far, the court consistently emphasises the front-loaded character of UPC proceedings.

Appeal cases

Given the short duration of first instance proceedings (from a few months for preliminary injunction (PI) cases to about 12 months for main proceedings), the first wave of cases has already reached the UPC Court of Appeal. By the end of September 2024, the Court of Appeal had received 14 appeals on the merits, 28 appeals in provisional measures cases and 54 interim appeals addressing procedural questions. The Court of Appeal has issued many decisions, especially in the latter two categories, providing important guidance not only on procedural questions, but also on substantive aspects of claim construction, patent infringement and validity.

Insights from first case law on procedural and substantive issues

Language of proceedings

At the UPC court of first instance, the predominant language of proceedings has shifted from German to English, now at 53 per cent. German follows closely at 42 per cent, while other languages like French (2 per cent), Italian (2 per cent) and Dutch (1 per cent) play negligible roles. All German UPC local divisions allow English for proceedings, and changing the language in ongoing cases is possible. The UPC Court of Appeal, in its Curio Bioscience v. 10x Genomics decision (UPC CoA 101/2024 of 17 April 2024), provided guidance on the criteria for language change requests, considering factors such as the defendant’s position, size, nationality and the relevance of the technology.

Public access to court files and register 

All UPC decisions and orders are published, ensuring transparency. However, access to written pleadings and evidence requires a reasoned request, necessitating legal representation. Historically, approaches have varied among UPC divisions. The Munich central division adopted a restrictive stance, as seen in decisions UPC_CFI_75/2023 and 1/2023, rejecting access requests based on “education and training”. Conversely, the Nordic-Baltic regional division took a liberal approach in Ocado v. Autostore (UPC_CFI_11/2023), granting access to an anonymous member of the public.

The UPC Court of Appeal, in Ocado v. Autostore (UPC CoA 404/2024 of 10 April 2024), established important precedents by dismissing Ocado’s appeal and granting access to the court file. The ruling clarifies legal standards for document access, distinguishing between requests during ongoing proceedings – requiring direct interest – and those made after proceedings, which should generally be granted. Parties may request certain submissions to be treated as confidential, reflecting the court’s commitment to balancing transparency with protecting sensitive information.

Preliminary injunctions

One of the key decisions issued by the UPC Court of Appeal thus far is the NanoString Technologies v. 10x Genomics decision (UPC CoA 335/2023 of 26 February 2024), which provides significant guidance on PI proceedings, outlining essential requirements:

• discretionary decision with reasonable certainty: the applicant must demonstrate a “more likely than not” certainty on three issues:
  • entitlement: the applicant bears the burden of proof, although a presumption exists based on the register entry;
  • infringement: proof of patent infringement is required; and
  • validity: a presumption of validity exists, the defendant bears the burden of proof for invalidity;
• balance of interests: the court must weigh the interests of both parties fairly; and
• no unreasonable delay: timeliness is crucial and significant delay may hinder granting of a PI.

The decision also offers insights into the developing case law for claim construction, emphasising that the patent claim is not only the starting point but the decisive basis for determining the scope of protection of the patent. It should be interpreted from the perspective of a skilled person, applying Article 69 EPC and its Protocol of Interpretation. The interpretation must not rely solely on the literal meaning of the claim wording but should incorporate the description and drawings to resolve ambiguities. These principles apply to both infringement and validity assessments. This Court of Appeal decision is particularly relevant as it may influence the pending EPO Enlarged Board of Appeal referral concerning the use of the description for claim interpretation (G 1/24 Heated Aerosol).

Finally, the decision provides important guidance on the UPC’s approach to assessing inventive step. While the Munich local division considered the patent valid and granted the PI, dismissing a prior art document (D6) as a suitable starting point, the Court of Appeal overturned this decision, asserting D6 is relevant for a skilled person addressing the claimed invention’s problem, thereby qualifying as a suitable starting point. The Court of Appeal emphasised that there is no need to identify “the closest prior art”. This aligns with the German approach but raises the bar for patent validity compared to EPO practice.

As the recent PI decision Philips vs. Belkin (UPC_CFI_390/2023) has revealed, the UPC – in contrast to, for instance, German courts – is also willing to grant a PI based on a standard-essential patent (SEP). Issuing this SEP-based PI may, however, have been comparably unproblematic due to the fact that there was no fair, reasonable and non-discriminatory (FRAND) defence. 

No clarity on use of prosecution history for claim construction

In VusionGroup v. Hanshow (UPC CoA 335/2023 of 13 May 2024), the Court of Appeal did not clarify whether prosecution history can be used for claim construction, leaving this issue, contentious among UPC divisions, unresolved. For example, the Munich local division previously held that amendments made during examination could impact claim construction (UPC_CFI_292/2023, Headnote 1). In contrast, the Düsseldorf local division ruled in 10x Genomics v. Curio (UPC_CFI_463/2023) and Ortovox v. Mammut (UPC_CFI_452/2023) that statements made during the grant procedure are not relevant for claim construction.

Despite stakeholders hoping for clarification, the Court of Appeal opted not to address this, as proper claim construction in the case before it did not necessitate evaluating the application or prosecution history. The question of prosecution history estoppel before the UPC therefore remains unresolved, with practitioners keenly awaiting future rulings for guidance.

Protective letters – a double-edged sword at the UPC

Filing a protective letter typically aims to prevent ex parte PIs, a practice well established in Germany. The UPC allows protective letters, but recent ex parte PI cases illustrate how protective letters can be a double-edged sword before the UPC.

In myStromer v. Revolt (UPC_CFI_177/2023), a protective letter filed before the EuroBike 2023 trade fair resulted in an ex parte PI being granted, as the arguments in the letter were deemed weak and unpersuasive. This highlights a risk: an ineffective protective letter may inadvertently support the court’s rationale for granting an ex parte PI.

Conversely, in Ortovox v. Mammut (UPC_CFI_452/2023), Ortovox sent a warning letter to Mammut in November 2023, alleging patent infringement related to an avalanche victim location device. Mammut showcased the potentially infringing device at a trade fair and made it available for pre-order but chose not to file a protective letter, leading to a granted ex parte PI within 10 days of Ortovox’s request. This scenario demonstrates that not filing a protective letter can also influence the court’s decision to grant an ex parte PI.

Potential defendants in UPC litigation should carefully consider and prepare protective letters in anticipation of an attack and may also update them as new arguments develop.

Auxiliary requests – number must be reasonable

Like in national nullity and EPO opposition proceedings, at the UPC patent owners are allowed to amend their patent in reaction to a counterclaim for revocation or a central revocation action. The UPC has made it clear that the number of auxiliary requests used to defend a patent must be “reasonable”. This has so far not been tied to a specific number of auxiliary requests. In revocation decision Meril vs. Edwards Lifesciences (UPC_CFI_255/2023), the central division Paris held that a number of 84 auxiliary requests based on nine conditional amendments would be “extremely high, potentially hindering the efficiency of the UPC proceedings”, but nevertheless considered this number of 84 auxiliary requests not “unreasonable”, considering the “extreme complexity of the case”, the “importance of the patent” and the “interrelationship with other proceedings”. It will be very interesting to see how this requirement of a “reasonable” number of auxiliary requests develops in the future.

First UPC revocation decisions

In its first revocation decision Amgen v. Regeneron/Sanofi (UPC CFI 1/2023 and 14/2023 of 12 July 2024), the UPC clarified key aspects of its approach to claim construction, disclosure standards and inventive step assessment. 

The court emphasised that, when interpreting a patent claim, one may not resort to purely literal or philological understanding, but needs to derive the technical meaning of the terms to a skilled person by using the patent’s description and drawings. The court expressly held that the patent description may represent a patent’s own lexicon. It will be interesting to see if and how these UPC decisions will influence the EPO Enlarged Board of Appeal when deciding on the currently pending referral G 1/24 on using the description for claim interpretation.

Regarding substantive priority, the UPC appears to adopt the EPO’s “gold standard” for assessing disclosure, namely whether a skilled person can derive the claim’s subject matter directly and unambiguously using common general knowledge. It will be interesting to see to what extent and quality the UPC will also adopt this in its approach to assessing novelty and added matter. 

In assessing inventive step, the UPC did not adopt the EPO’s strict problem-and-solution approach. The court refrained from selecting “the closest prior art”. Instead, it held that there can be multiple realistic starting points and it is unnecessary to identify the “most promising” one. Additionally, the UPC did not formulate an “objective technical problem” based on the technical effect of the distinguishing features, adopting a more general problem formulation. However, the court noted that a technical effect or advantage over the prior art may indicate inventive step and that a feature that is selected in an arbitrary way out of several possibilities cannot generally contribute to inventive step.

Furthermore, the court stated that, in general, a claimed solution is obvious if the skilled person would be motivated to consider the claimed solution and implement it as a next step in developing the prior art. It may be relevant whether the skilled person would have expected any particular difficulties in taking any next steps. The absence of a reasonable expectation of success (or in general, non-obviousness) does not follow from the mere fact that other ways of solving the underlying problem are also suggested in the prior art or have been pursued by others. The decisive question to be answered is whether the claimed solution is non-obvious. 

The UPC’s approach diverges from the EPO and aligns more closely with German practice. The UPC seems to impose a stricter assessment of inventive step, and defensive arguments following the EPO’s problem-and-solution approach may not be effective.

Outlook

The UPC’s distinct approach to claim construction and inventive step assessment represents a significant shift from EPO practice, influencing patent interpretation and enforcement while setting new litigation standards across Europe. It will also be very interesting to see which position the UPC will take towards FRAND in SEP cases. The first decision Panasonic v. OPPO (UPC CFI 210/2023 of 22 November 2024) in this respect has now been rendered by the Mannheim Regional Division, applying a FRAND approach similar to the approach taken by German courts.  

Looking ahead, the UPC’s evolving case law will likely impact the broader landscape of European patent law. Initial statistics show robust stakeholder engagement, indicating growing confidence in the UPC’s capability to manage and decide on complex patent disputes within a short amount of time, typically about 12 months. However, varying approaches among local divisions highlight the need for clear guidance from the Court of Appeal.

Given the significant differences from EPO practice and similarities to certain German patent practice, litigants should select counsel experienced in both German and UPC litigation. The UPC is at the forefront of a new era in patent litigation, and its case law is evolving rapidly. It is evident from the UPC’s first year of operation that parties and practitioners are following and shaping the new system with pride and excitement. Stay tuned!

Dieser Artikel wurde erstmal im März 2025 auf IAM veröffentlicht; weitere ausführliche Analysen finden Sie unter IAM The Patent Prosecuiton Review 2025.