What patents can be challenged at the UPC?
A revocation action can be brought at the UPC against any Unitary Patent or against any European Patent that has not been (validly) opted-out.
What are the main stages in the procedure and the timescales?
The UPC aims to reach a decision quickly, typically within 12 months of the action being brought. The procedure is mainly written and the deadlines for the parties’ written pleadings are short:
Faced with a revocation action, the patentee will have to react quickly to defend the patent. On the other side, the plaintiff will have only a limited time to react to claim amendments proposed by the patentee.
After the written procedure, the action enters an interim procedure managed by the judge-rapporteur and to be completed within 3 months of the end of the written procedure. The aim of the interim procedure is to prepare the case for the oral hearing. The judge-rapporteur seeks to identify the main issues and the facts which are in dispute by clarifying the positions of the parties where necessary. The judge-rapporteur may order a party to produce further pleadings, documents, evidence or experts. In addition, a schedule for the remainder of the proceedings will be established and the possibility of settlement explored. The interim procedure may include a case management conference between the judge-rapporteur and the parties, usually by video or telephone conference.
The oral procedure then begins and the presiding judge will normally take over the management of the action. The oral hearing (trial) will in most cases be scheduled for only 1 day. To enable this, the presiding judge may in advance impose time limits on the parties’ oral submissions. Witnesses or experts may be heard at the oral hearing and may be questioned by the judges and the parties. The oral hearing will normally be held in person but the Court may allow a party or person to attend by video conference or even, if the parties agree, to hold the oral proceedings by video conference. The oral hearing will normally be public.
Which UPC Division is responsible for revocation actions?
A revocation action is brought before the Central Division in Munich or Paris (or, in future, Milan). The Central Division location responsible for hearing the action depends on the technical field of the patent. At present, Paris is responsible for patents in IPC classes A (human necessities), B (performing operations, transporting), D (textiles, Paper), E (fixed constructions), G (physics) and H (electricity). Munich is responsible for patents in IPC classes C (chemistry, metallurgy) and F (mechanical engineering, lighting, heating, weapons, blasting).
Who are the Judges?
Two legally qualified judges who are nationals of different Contracting States and one technically qualified judge.
What is the language of proceedings?
The language in which the patent was granted by the EPO. As most European patents are granted in English, this will usually be English, but will sometimes be German and less frequently French.
Are there any Court Fees?
The Court Fee for a revocation action is €20,000.
What effect do pending infringement proceedings have on the procedure?
If infringement proceedings are already pending between the same parties before a Local or Regional Division, then the revocation action must be brought as a counterclaim for revocation before that same Local or Regional Division. The Local or Regional Division can then either: proceed with both the infringement action and the counterclaim for revocation; proceed with the infringement action but refer the counterclaim for revocation to the Central Division; or, if the parties agree, refer both the infringement action and the counterclaim for revocation to the Central Division. If the Local or Regional Division hears the counterclaim for revocation, then a technically qualified judge will be assigned to the case in addition to the Division’s three legally qualified judges.
Please contact your usual HLK attorney or upc@hlk-ip.com if you would like further details of our UPC litigation offering, or view our UPC webpage for more UPC information and updates.
This is for general information only and does not constitute legal advice. Should you require advice on this or any other topic then please contact hlk@hlk-ip.com or your usual HLK advisor.
