Key features of litigation at the UPC

This update is intended to provide you with an overview of the litigation process, as envisaged, at the Unified Patent Court when it goes “live” on 1 June 2023.

Pre-action

Unlike the UK courts, it is not necessary to go through prolonged pre-action correspondence / a specific protocol before bringing infringement proceedings. In fact, patentees could be said to be incentivised to bring an infringement action at the UPC as early as possible, since the longer they leave it after notifying the alleged infringer of the patent, the greater the risk that the alleged infringer could pre-emptively bring an action (e.g. a declaration of non-infringement action) at a national court, which could have the effect of locking the patentee out of the UPC.

Court fees & costs

• The UPC’s fee structure is a mixture of fixed and value based fees depending on the type of action brought. A value-based fee is charged when the value of a case is above 500,000 EUR, and will increase with the value of the action.
• The unsuccessful party will bear the reasonable legal costs of the successful party (up to an upper limit set by the Rules of Procedure).
• However, small and micro-entities will benefit from a 40% reduction in court fees and, there will be reimbursements of fixed and value-based fees of up to 60% in cases of early settlement of the action by the parties, withdrawal of an action or the use of a single judge.

Litigation procedure

The litigation process itself (which is intended to be quick: typically 12 months from service of a claim to trial) can be broadly divided into three stages, as summarised below:

Written: the parties exchange written statements of case and pleadings. Service of documents will not be carried out by the parties themselves, but instead performed by the UPC, usually by email.

Interim: one of the judges acting as a “judge-rapporteur” convenes an interim hearing to narrow down the issues and disputed facts, and in particular to explore the possibility for a settlement including through mediation or arbitration, or both. The UPC actively manages the proceedings and the procedure is heavily weighted towards the use of written arguments rather than oral hearing to allow quick resolution. If there is no settlement, the procedure then concludes typically with the oral hearing.

Oral: this can be dispensed with by agreement of the parties. However, if it goes ahead it should take no more than a day and will be open to the public. Oral evidence will be limited (if ordered by the judge during the interim procedure) and a reasoned written decision will be issued within 6 weeks of the hearing.

Bifurcation

In principle, the UPC has adopted a non-bifurcated system (like the UK and France), where decisions relating to infringement and validity of a patent can both be heard together. However, there are certain scenarios in which the decision on infringement and validity may not be made by the same UPC body in the same proceedings. This leads to bifurcation (which is common in some European legal systems, such as Germany), whereby, e.g. a revocation action will be heard by the Central Division, and infringement in relation to the same patent by a Local or Regional division.

Expected timeline of infringement/revocation proceedings

Infringement proceedings:

Revocation proceedings:

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.