Summary of the UPC month
In the heat of the summer, the number of new proceedings before the UPC seems to have cooled only slightly.
A total number of 476 cases is now pending and no crystal ball is needed that we will soon be celebrating the 500th UPC case.
At the Court of First Instance, the situation remains stable with a steady increase of cases, wherebythe German Local Divisions continue to attract the lion share of new cases filed.
However, at the Court of Appeal, the fever pitch is rising.
- The Court of Appeal saw a 133% increase in requests for discretionary review under R. 220.3 RoP (compared to a 50% increase from June to July).
- In the race of procedural languages, English extended its lead as number one to 54%.
Key decisions in a nutshell
The key decisions of the month are dealing with:
(1) Security for legal costs by a party located in the
United States
Unlike in German infringement proceedings (see sec. 110 German Code
of Civil Procedure), the fact that a claimant is seated outside the
EU does not in itself constitute grounds for an obligation to
provide security.
(2) The possibility of a partial
revocation
The Local Division Hamburg holds that – notwithstanding any
contrary intention of the patent proprietor (ne ultra petita)
– a patent must not be fully revoked but rather can be
partially revoked, if the grounds for invalidity only concern a
certain independent patent claim, which is not directly linked to
another independent patent claim held to be valid.
(3) The distinction between direct and indirect patent
infringement
If the defendant appropriates the actions of a third party in the
sense of an extended workbench, it may be inappropriate to hold him
liable only for indirect patent infringement. However, legal
certainty requires that a specifically outlined completion of the
patented device can be expected with certainty (e.g. the defendant
himself provides respective instructions and deviations from it do
not lead to a functional product).
Remarks
181 infringement actions on the merits and 43 applications for provisional measures. What does this ratio tell?
In the first place, that the UPC is perceived by the users as an attractive venue for preliminary injunction proceeding.
Second, that the share of almost 1:4 (PI vs main actions) is certainly higher than in traditional EU patent litigation.
However, is this perception and trend justified when turning to UPC success rates? This is still a judgement call since the UPC Court of Appeal has for the time being not confirmed a single PI.
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