13 November 2024: Withdrawal of an opt-out after national proceedings commenced before the UPC came into effect is possible, following a decision of the UPC Court of Appeal
A decision by the UPC Court of Appeal on 12 November 2024 in the AIM Sport Vision vs. Supponor case now makes it possible to withdraw an opt-out in instances where national proceedings commenced before the UPC came into effect.
This decision opens up new options for patentees who may have thought that the UPC was closed to them because they had opted out patents that had been the subject of national litigation before the UPC came into effect.
These patentees will now be able to withdraw the opt-outs of such patents, which can then be litigated in the UPC, provided no national proceedings in respect of such patents have been instigated since the UPC came into effect.
You can read our full analysis of the Court of Appeal’s decision and its implications here.
Our UPC experts would be delighted to discuss the implications of this decision, or any other aspect of litigation strategy or practice before the UPC, with you.
To arrange a call, drop us a line at upc@hlk-ip.com or contact your usual HLK adviser.
19 July 2024: New case management system to be developed for UPC
The UPC has today announced that it will work together with the EPO to develop a new case management system (CMS) for the Court. The Court hopes to benefit from the EPO’s experience and expertise in providing digital systems. The aim is to have a new CMS operational by mid-2025.
We expect this development will be warmly welcomed by UPC representatives.
1 July 2024: Preliminary injunctions – How long is too long to wait?
Summary
The UPC Hamburg Local Division (LD) refused a preliminary injunction request on the ground that the request had not been timely filed by the claimant. In particular, the LD found that a three month delay between obtaining knowledge of the alleged infringement and filing the request amounted to “not treating the matter with the necessary urgency”.
The Context
At the end of last week, the UPC Hamburg LD rejected a preliminary injunction request filed by Ballinno targeting VAR technology used by football referees to detect offsides. Had the preliminary injunction been granted, this could have caused a major headache for UEFA; a defendant in the case that is currently using VAR technology provided by the Kinexon group companies (the other defendants) in Euro 2024.
Key Points
- The UPC Rules of Procedure (RoP) do not give a time limit for filing a PI request, instead stating that the court will consider various factors including the urgency of the action. The RoP also state that the court “shall have regard to unreasonable delay in seeking provisional measures”.
- In an earlier decision on a separate case between Dyson and SharkNinja, the UPC Munich LD found that a two month delay between obtaining knowledge of an alleged infringement and filing a preliminary infringement request was reasonable.
- Both the present decision and earlier Dyson v SharkNinja decision are LD decisions; the UPC Court of Appeal has yet to rule on this issue. The indications from the LD decisions so far are that, while two months may be an acceptable delay before requesting a preliminary injunction, longer delays than this may risk refusal.
- Another factor that may be considered by the courts when determining whether to grant a preliminary injunction is the complexity of the patent in suit and alleged infringing technology; essentially where a complex and detailed analysis is required to support an infringement allegation, this may justify a longer period between obtaining knowledge of the alleged infringement and filing the preliminary injunction request. In the present case, the technology in question is considered by the Hamburg LD to be simple, so this factor did not assist Ballinno.
- In addition to Ballinno proceeding with insufficient urgency, the court found that the preliminary injunction request could have been rejected on other grounds, including that the Hamburg LD were not convinced with sufficient certainty that the patent in suit was infringed by UEFA and the Kinexon group companies.
The Hamburg LD gave leave for both parties to appeal the decision, which Ballinno have done. It is therefore possible that a UPC Court of Appeal decision providing more certainty on the requirements for obtaining a preliminary injunction may result.
11 June 2024: EPO allows delayed requests for Unitary Effect to extend Unitary Patent coverage to Romania
Summary
On 31 May 2024, Romania deposited its instrument of ratification of the UPC Agreement, meaning that on 1 September 2024, Romania will become the 18th EU Member State to join the UPC and Unitary Patent System.
Key points
- One effect of this is that any Unitary Patent registered on or after 1 September 2024 will automatically cover Romania as well as the other 17 EU member states that currently participate in the UPC/UP system. Before 1 September 2024, however, it will still be necessary to validate granted European patents separately in Romania if patent protection is required there.
- To allow the proprietors of granted European patents to benefit from the enhanced geographical coverage of the Unitary Patent after 1 September 2024, the European Patent Office is now accepting requests to delay the registration of Unitary Patents until after Romania joins the UP/UPC system.
- By requesting this delay at the time of requesting Unitary Effect, European patent proprietors can be sure of obtaining a Unitary Patent that covers all 18 of the EU member states that will be participants in the UPC/UP system as of 1 September 2024.
For more information on this or any other Unitary Patent or UPC issue please read our latest UPC updates or contact our experts at upc@hlk-ip.com.
22 April 2024: The UPC Court of Appeal clarifies factors influencing decisions on changing the language of proceedings
Summary
At the end of last week, the UPC Court of Appeal issued an order that helpfully clarified the factors to be considered when deciding on a request to change the language of proceedings. The order states that “all relevant circumstances shall be taken into account”. The order also states that the relevant circumstances “should primarily be related to the specific case and the position of the parties, in particular the position of the defendant”, with the defendant favoured if the balance is equal.
One particularly useful aspect of the order is that it provides a list of example relevant circumstances. Significant weight is given to the language of proceedings before the EPO; the language in which the patent is granted. The weight given to the language of the patent may be of interest to applicants and representatives based in the UK, US and other countries where English is the dominant language; as the majority of EP patent applications are filed in English, strong arguments for conducting proceedings in English at the UPC are quite likely to be available.
The proceedings in question are between 10x Genomics Inc. and Curio Bioscience Inc., UPC CoA 101/2024. Curio Bioscience are the defendant in the main proceedings.
Context
The local and regional divisions of the UPC operate in a variety of languages; each division has designated English as either the sole or a selectable language in which proceedings will be conducted.
When filing a claim at the UPC, the claimant selects the language of proceedings (in part through selection of which UPC division to file the case at). At the request of one of the parties, the President of the Court of First Instance may decide to use the language in which the patent was granted as the language of proceedings.
Key points
- The decision of whether to use the language in which the patent was granted is to be made “on grounds of fairness”. Despite the discretion allowed to President of the Court of First Instance to determine what is fair in a given case, the Court of Appeal determined to set aside the first instance decision, on the basis that an incorrect reading of what constitutes fairness and what circumstances are relevant had been used (see points 19 to 21 of the order).
- Some examples of “relevant circumstances” were provided, such as the language mostly used in the field of technology. The language of the evidence, including prior art, is “of particular relevance”. The nationality or domicile of the parties is relevant, as is the relative size of the parties (it is not necessary to be a SME for party size to be relevant). Also relevant is the likely delay resulting from a change of language. The above relevant circumstances are discussed in points 22 to 25 of the order.
- By contrast, the language skill of the representatives “is in general of no significance”. The nationality of the judges is also generally not relevant. General facts, not specifically relating to the dispute, are also given low relevance; an example from the proceedings is the relative proportion of EU citizens that speak German which was put forward by 10x Genomics in support of the use of German as the language of proceedings.
- Significant weight is placed on the language of the patent (that is, the language of proceedings before the EPO). The language of the patent is discussed in points 31 to 35 of the order, with point 34 stating that “as a general rule and absent specific relevant circumstances pointing in another direction, the language of the patent as the language of the proceedings cannot be considered to be unfair in respect of the claimant”.
- With reference to the proceedings in question, the Court of Appeal favoured the arguments of Curio Bioscience for changing the language of proceedings to English, factors in favour of which included that: the language of the patent is English, both companies are US companies, the majority of the evidence for both sides is in English, and Curio Bioscience is significantly smaller than 10x Genomics. Accordingly, the language of proceedings was changed to English.
15 April 2024: The UPC Court of Appeal provides guidance of when a non-party to proceedings may obtain pleadings and evidence from the Registry
Summary
Last week the UPC Court of Appeal provided some much needed guidance on the ability of the public to gain access to pleadings and evidence held at the Registry in circumstances where the applicant is not a party to the proceedings. The upshot is that if an applicant applies for access to such materials from a general interest perspective, it is unlikely that access will be granted whilst the relevant proceedings are on-going. On the other hand, access is much more likely to be granted at the end of the proceedings – if a judgment has been handed down or settlement reached.
This is a disappointing decision as it seriously restricts the ability to access key materials in UPC cases in a timely manner.
Context
Since the start of the UPC in June 2023, there has been considerable debate concerning the difficulty and uncertainty for a non-party applicant to obtain key documents, such as pleadings and evidence, in UPC proceedings. The procedure for doing so is set out in Rule 262.1(b) of the UPC’s Rules of Procedure. It states that evidence and pleadings will be available to non-parties upon a “reasoned request” to the UPC Registry. A Judge-Rapporteur will make a decision after consulting the parties.
Key points of the decision
This decision concerns the interpretation of Rule 262.1(b) resulting from a request from a non-party in the Ocado v Autostore case which, by the time of the request, had been settled.
At first instance, the Court allowed disclosure of the requested pleadings and evidence. Ocado appealed the decision. The Court of Appeal made the following findings:
- The general principle is that the UPC Register is public and UPC proceedings are open to the public.
- On a request from a non-party for evidence and pleadings, the UPC has to balance the rights of access to the public against the rights of the parties to the proceedings (pursuant to Article 45 of the UPC Agreement). The latter concerns issues of confidentiality, personal data and other general interests including the protection of the integrity of the proceedings, for example in circumstances where a request is abusive or security issues are at stake.
- It was agreed by both Ocado and the redacted applicant that a member of the public generally has an interest that written pleadings and evidence are made available. This is because it allows better understanding of decisions made and allows scrutiny of the Court. The UPC held that a non-party’s general interest arises once a decision has been handed down or settled (as in this case) because it is only then that the decision needs to be understood and the positions of the Court scrutinised. Where there has been a settlement access to the court file may still give an insight in the handling of the dispute or provide scientific or educational interest.
By following this position, the Court of Appeal clarified that the parties can bring their claim in an impartial and independent manner without influence or interference from non-parties. The Court of Appeal clarified that the interest of the integrity of the proceedings usually only plays a role during the course of the proceedings unless the non-party can show that they have a direct (rather than a general) interest in the case. For example, if a non-party has an interest in the validity of the patent in suit because they are also a licensee or competitor – this could give rise to a direct interest that weigh in favour of materials being obtained during the course of the proceedings.
