Brief Summary

  • National proceedings initiated before the entry into force of the UPC are highly relevant for deciding UPCs jurisdiction, and so is the timing when withdrawing an opt-out from the UPC.
  • “Reasoned requests” in the form of a “wish to form an opinion on validity” or to “educate oneself” are not concrete and verifiable legitimate reasons for accessing the requested documents of the files.
  • The point in time when submitting an action is decisive for deciding upon the competence of a division of the Court of first instance.

Introduction – cases and oral hearings

It is notable, but not unexpected, that most of the actions filed with the UPC, i.e., infringement actions and applications for provisional measures, have been filed with the Local divisions in Germany. Hence it appears most UPC case law, at least the early case law, will be created in Germany and thus worded in the German language.

Oral hearings have already been conducted in some of the cases providing some further guidance in the practice of the UPC.

So far, the hearings have in essence concerned applications for provisional measures.

  • Two hearings have been conducted at the Local division in Munich (Case: UPC_CFI_2/2023, 10x Genomics and others v. NanoString Technologies and others, regarding EP4108782 and EP2794928),
  • One at the Local Division in Helsinki (Case: UPC_CFI_214/2023, AIM Sport Vision AG vs Supponor Oy/Limited/SASU/Italia SRL/España SL, regarding EP3295663), and
  • One at the Local Division in Vienna (CUP&CINO Kaffeesystem-Vertrieb GmbH & Co. KG vs. Alpina Coffee Systems GmbH, regarding EP3398487).

There will be a further hearing in 10x Genomics, Inc. and others vs. NanoString Technologies Inc. and others at the Local Division in Munich on the 10th of October.

The Unified Patent Court’s webpage regularly announces events such as upcoming public hearings. Decisions and orders issued in the respective cases will be published by the UPC registry. No decisions have yet been published but some should be available during October because of the already conducted oral hearings.

Jurisdiction of the UPC in view of national proceedings

It is noted that national court proceedings, even if they have been initiated before the entry into force of the UPC, are decisive for whether the UPC will have jurisdiction or not. They also play an important role when an attempt is made to withdraw a previously made request for an opt-out from the Court.

These matters were discussed and clarified in the oral hearing in the AIM Sport Vision AG vs Supponor Oy/ Limited/ SASU/Italia SRL/España SL case in September. Even if the case is likely to go to appeal, it does point in a rather clear direction.

During the oral hearing, AIM Sport Vision AG’s application for provisional measures was rejected as the Court decided it did not have jurisdiction to hear the case. The case was also dismissed on the merits for the same reason.

AIM Sport Vision AG had initially opted-out the patent in suit from the UPC’s jurisdiction, but subsequently withdrew the opt-out before the application for provisional measures was filed. However, the withdrawal of the opt-out was executed while national proceedings in Germany were still pending (on appeal). This was by the Court considered to contradict Article 83(4) of the UPC Agreement (UPCA) (“Unless an action has already been brought before a national court, proprietors of or applicants for European patents or holders of supplementary protection certificates issued for a product protected by a European patent who made use of the opt-out in accordance with paragraph 3 shall be entitled to withdraw their opt-out at any moment….”). It did not matter that the proceedings were initiated before the entry into force of the UPC.

This decision, even though it is likely to be appealed, clarifies important criteria for establishing the jurisdiction of the UPC. Particularly it highlights limitations regarding its jurisdiction.

Public access to the register

The cases submitted to the UPC Registry can be accessed and searched through the UPC Case Management System (CMS), if you have an electronic login provided through any of the recognized suppliers, or else, they can be accessed through the Unified Patent Court’s webpage. The search engines of the CMS and the web page respectively are however somewhat different and provide less or more information regarding the cases.

According to Rule 262 of the Rules of Procedure of the UPC (RoP), decisions and orders made by the Court shall be published (Rule 262.1 (a) RoP). However, written pleadings and evidence in a proceeding, lodged at the Court and recorded by the Registry, shall only be available to the public “upon reasoned request to the Registry”. The decision is subsequently taken by the judge-rapporteur after consulting the parties. Naturally, there have been speculations regarding what qualifies as a “reasoned request”. Since this month, there are a few examples of what are not considered legitimate reasons for providing access to information of the files.

In relation to proceedings regarding EP3056563 (Case: UPC_CFI_75_2023, Healios K.K, Riken, Osaka University), it was made clear that it is the Court’s view that a request based on that someone “can be informed of the proceedings before the Unified Patent Court for the purposes of education and training” is not a legitimate reason for providing access to documents of the file.

In relation to proceedings regarding EP3666797 (Case: UPC_CFI_1/2023; EP3666797, Amgen, Inc.) the applicant initially made the request on behalf of an anonymous third party who was interested in “the patent at issue and its legal validity (or lack thereof)”. In the Court’s preliminary opinion on the request, the applicant was informed that it could not be assessed if any third party has a legitimate reason for access to the file based on this limited information. In reply to this opinion, the applicant changed the request to be in his name and based the request on that he wished “to form an opinion on the validity of the patent under consideration”. As a member of the public and a patent attorney, this was both “a personal and a professional interest”. The request was rejected as such arguments cannot be accepted as a sufficiently concrete, legitimate reason to make available all pleadings and evidence based on a mere wish to form an opinion on the validity of the patent.

Going forward, we expect to see more attempts to access information of the files of the proceedings based on various arguments and reasons. This should shed further light on what qualifies as “a reasoned request” to obtain such information. What is clear already now is that a request will not be accepted based on merely an interest in the case. In summary, the limited access to files at the UPC very much differs from the generally open access at the EPO.

Competence of divisions of the Court of first instance – the meaning of “the point in time”

In the same case (Amgen, Inc.,) the meaning of the wording “has been brought” of Article 33.4 of the UPCA was thoroughly analyzed illustrating the importance of a mere 19 minutes between the filing of actions in relation to the same patent at different divisions of the Courts of first instance.

Article 33(4) of the UPCA says: Actions referred to in Article 32(1)(b) (declarations of non-infringement) and (d) (revocation actions) shall be brought before the central division. If, however, an action for infringement as referred to in Article 32(1)(a) between the same parties relating to the same patent has been brought before a local or a regional division, these actions may only be brought before the same local or regional division.

In this case, a statement of revocation was filed in hard copy at the Registry in Luxemburg at 11.26 on the 1st of June (in place of the central division, due to problems with the UPC CMS). At this stage, no infringement action had been brought to a local division because this was not performed until at a “later” point in time, 11.45 on the 1st of June (the same day). In view of the difference between these points in time and relying on Article 33.4 UPCA, the central division decided that it was competent to hear the revocation action. As a result, the patent owner´s (Amgen) later preliminary objection (filed at the local division in Munich), that the statement of revocation was filed at the wrong division (the central division) was in itself found to be filed in the wrong division and was therefore rejected.

This was a summary of some of the first events and happenings of the UPC. More is definitely to come.

The summary was provided by Camilla Mörch, European Patent Attorney, European Patent Litigator at BRANN AB.