In part one of this two-part comparative article series on UPC and US patent litigation, Paulina Kasprzak explores the differences between the two systems in the stages leading up to trial, focusing on infringement actions.
Paulina Kasprzak | Connect on LinkedIn | pkasprzak@hlk-ip.com
In the short time since it opened for business in June 2023, the Unified Patent Court (UPC) has proved to be a very popular venue for patent litigation, attracting actions from claimants around the world.
According to the UPC’s first annual report[1], the USA had the highest number of claimants (44) in infringement actions filed at the UPC in 2024, ahead of Germany (34), France (20) and Italy (13), and this trend looks set to continue in years to come.
As the early US adopters of the UPC can attest, while both UPC and US patent litigation share the ultimate goal of resolving patent disputes efficiently, their procedural approaches differ in many respects. These differences affect how cases are managed, argued, and resolved. Here, we highlight some of the key distinctions between the two systems in the stages leading up to trial, focusing on infringement actions.
Whilst neither system requires the patent proprietor to contact the alleged infringer before bringing an action, the initial stages of litigation in the UPC and US courts differ in many other respects.
UPC proceedings are front-loaded, meaning that parties are required to present all key arguments and evidence at the outset in written statements of case. Deadlines are tight, and the Court’s emphasis on efficiency means that extensions to these deadlines are rare. This structure and time-sensitive process requires parties to prepare thoroughly from the start, as the opportunity to introduce new arguments or evidence at a later stage in the proceedings is limited.
While this early written process requires careful preparation from the outset, because each party’s arguments are established early, it also means that the parties are able to make a reliable assessment of the strengths and weaknesses of their case early in the proceedings, and there should be few surprises later in the proceedings.
By contrast, US patent litigation is much less constrained at the outset. A plaintiff filing a complaint in a US court is only required to provide enough information to allow the defendant to understand and respond to the claim, which is a relatively low bar. This allows for greater flexibility, enabling parties to refine their arguments over the course of the litigation. The US system therefore allows for greater divergence from the initial claim as new evidence comes to light and legal strategies evolve, resulting in the allocation of time and costs also being more staged.
The UPC has Local and Regional Divisions throughout the participating EU states, and Central Divisions in Germany (Munich), France (Paris) and Italy (Milan). Infringement actions will usually be brought in a Local or Regional Division, with the precise venue being dependent on the country in which the alleged infringement takes place, or the country in which the defendant is resident or has a place of business. The Central Divisions have jurisdiction over revocation actions, but can also hear infringement cases in some circumstances.
In the US, first instance patent cases are dealt with by US District Courts. Other relevant venues include the International Trade Commission (ITC) for patent disputes related to imported goods, and the US Patent and Trademark Office (USPTO), which grants patents and handles post-grant invalidity proceedings such as re-examinations and inter-partes reviews.
One significant distinction between the UPC and US systems is the type of judges who hear the cases. Infringement actions in the UPC are heard by a multinational panel of three legally qualified judges who are specialists in patent law. A technically qualified judge with expertise in the technical field of the patent at issue can be added to the judging panel, either at the request of one of the parties, or on the Court’s own initiative, or automatically if the validity of the patent is challenged in a counterclaim. This combination of specialist patent expertise and relevant technical expertise, where required, ensures a high level of expertise in the cases heard.
In the US, however, patent cases are generally presented to judges who are not necessarily specialised in patent law (though many US judges do have extensive experience of hearing patent cases). Additionally, US patent actions often involve jury trials, in which a jury, rather than the judge, is responsible for deciding the complex issues of patent infringement and validity, and the damages awarded where infringement has been found.
The approach to disclosure (known in the US as discovery) is another area where the two systems diverge.
Under the UPC, disclosure is highly limited and not granted by default. Parties are not automatically required to disclose documents in their control that either help or hinder their case, or support the other party’s case. Instead, they must apply to the court for permission to obtain specific evidence from the counterparty, provided they can demonstrate the relevance of the evidence requested.
This contrasts sharply with the US system, where discovery is far broader. US patent litigation involves extensive documents exchange, depositions (recorded, sworn pre-trial sessions of witness questioning by attorneys), and interrogatories (written questions exchanged by parties). Discovery is a lengthy and complex process which can take months or even years, and often involves motions to compel exchanges of specific documents or responses. It is a crucial stage of proceedings, as parties may seek summary judgment based on discoveries made, for instance, around the validity of the patent in question.
Claim construction, which involves interpreting the language of the patent claims, plays a pivotal role in patent litigation as it directly influences the outcome of the case.
In the UPC, claim construction is addressed early in the process, with the parties submitting their respective interpretations in writing. If the case proceeds to an oral hearing, the Court will decide on its preferred claim construction if there is disagreement between the parties.
In the US system, by contrast, claim construction is often addressed in a dedicated hearing known as a ‘Markman’ hearing. This hearing provides parties with an opportunity to present arguments and evidence on how patent claims should be interpreted. In the US, claim construction contentions can be exchanged at various stages – at the beginning of the case, after discovery or even during trial, with the timing and manner determined at the Court’s discretion. These legal issues are decided by judges.
In UPC cases, witnesses typically provide their evidence in writing rather than testifying orally in court. This written approach reduces the burden of live testimony and cross-examination, and contributes to the efficiency of the proceedings, but also limits the opportunity to assess and challenge the credibility and consistency of a witness. Written evidence also needs to be detailed and robust as it will carry significant weight.
While expert evidence may be considered by the UPC, it is only permitted when deemed necessary, and the Court rarely finds it essential to hear experts during the oral hearing.
By contrast, US patent trials rely heavily on oral testimony. Witnesses testify live in court, where both parties have the opportunity to cross-examine them. This live interaction is a critical component of US litigation which allows unrestricted and often intimidating questioning of all relevant witnesses.
Expert testimony also plays a more prominent role in US cases, with experts frequently testifying on matters of patent validity and infringement in extensive written reports.
UPC proceedings are generally shorter than US patent actions. The UPC imposes procedural time limits to ensure efficiency, with the final oral hearing on infringement and validity in first-instance decisions usually expected within 12 months of commencement of proceedings.
The UPC aims to limit the length of trials to one day in all but the most complex cases, with a decision often delivered immediately after the hearing, and the reasoning provided on a subsequent date, or given in writing within six weeks of the oral hearing.
In the US, patent trials can take considerably longer to conclude, primarily due to the larger volume and more complex nature of discovery (although accelerated timelines may be adopted for less complex cases). The time from filing the complaint to a first instance decision typically ranges from three to five years, and this timeline is typically managed by the presiding judge, rather than being defined by rules of procedure, as in the UPC. However, more straightforward patent actions can, if well managed, be completed within 12 to 14 months.
US patent trials normally last from three days to several weeks. In a jury trial, the jury deliberates immediately after the trial ends, which can take anywhere from a few hours to a few days.
Although both the UPC and US systems aim to resolve patent disputes, they do so in very different ways. The UPC offers a more streamlined, time-sensitive approach, with strict deadlines and a focus on written submissions. The US system offers greater flexibility and more opportunities for discovery and oral testimony, which makes it more expensive. Understanding these differences is vital for claimants navigating patent litigation across jurisdictions as strategies and timelines will vary significantly depending on the forum chosen.
Our next article, will look at other key aspects of US and UPC patent litigation, including the appeal process, settlement, confidentiality, remedies, provisional and protective measures, and cost recoverability.
[1] https://www.unified-patent-court.org/sites/default/files/upc_documents/UPC_AR_2024_HD_digital_version_double_page_compressed.pdf
Building on our first article reviewing the differences between UPC and US practice across various stages of litigation, in part two of this article series we focus on other key aspects of litigation in both jurisdictions, such as the appeal process, settlement, confidentiality, remedies, provisional and protective measures, and cost recoverability.
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