Actions before the UPC
One of the aims of the UPC is to ensure "expeditious and high quality decisions". To achieve the "expeditious" part of this aim, the Rules of Procedure of the UPC set out a challenging timetable for the various stages of actions before the UPC.
The procedure before the UPC is front-loaded and document-heavy, requiring intense activity from both parties at the start of an action, and adherence to short deadlines for the duration of the proceedings.
Consequently, it is crucial for parties contemplating bringing or defending an action at the UPC to be as well prepared as possible before litigation commences, and to know what to expect once proceedings are underway.
Here, I provide some practical tips on how you can prepare for possible UPC litigation, and what to expect once litigation has started in the UPC. I have focussed on how the defendant can prepare, but similar considerations apply to the claimant as well.
Early warning signs of imminent UPC proceedings
Legal action for infringement of a patent rarely comes out of the blue. Often the patent proprietor and the alleged infringer will have exchanged correspondence to try and resolve the issue before any Court action is instigated.
Having said that, there is no requirement for the patent proprietor to contact the alleged infringer before bringing an infringement action at the UPC. In fact, the limited time allowed by the UPC's Rules of Procedure for a defendant to respond to an infringement action could encourage the patent proprietor to bring an infringement claim without prior warning.
Additionally, an action for a preliminary injunction (or other provisional measures) will often be brought at short notice, leaving no time for pre-action negotiations between the patentee and the alleged infringer.
But there are some early warning signs you can look out for that might indicate that litigation in the UPC may be around the corner. Paying attention to these early warning signs can help you to prepare for litigation in the UPC.
For example, if proceedings are threatened or pending against your organisation (or a related organisation, or even a competitor) for infringement of a patent in another jurisdiction, it's a good idea to check whether any counterpart European patents exist that might be the subject of proceedings at the UPC.
Early identification of a European patent that might present a litigation risk can enable you to take pre-emptive action to improve your position at the UPC, for example gathering evidence that the patent is invalid and/or is not infringed by your activities.
One indicator of impending litigation that is unique to the UPC is the opt out status of a European patent. Litigation in the UPC is only possible for unitary European patents and European patents that have not been opted out of the UPC's jurisdiction. So once you've identified any possibly problematic European patents, it's worth monitoring their opt out status. If a patent that was opted out of the UPC's jurisdiction is opted back in (i.e. the opt out has been withdrawn), this may be an indication that enforcement action in the UPC is imminent.
Provisional measures and protective letters
Applications for provisional measures such as preliminary injunctions and seizure of goods are proving popular at the UPC. According to a recent update from the Court, 24 applications for provisional measures have been filed at the UPC since 1 June 2023[1].
As a defendant, the first you'll know about an application for provisional measures will likely be a notification from the UPC that an application for such measures has been filed against you. Such measures, if granted by the Court, could have serious adverse consequences for your business, for example preventing you from selling products.
If you are concerned about the risk of provisional measures being ordered against you, consider filing a protective letter as a pre-emptive defence against an application for such measures. As discussed in an earlier article by my colleague and fellow UPC Representative James Ward, the purpose of a protective letter is to persuade the UPC not to grant provisional measures, such as a preliminary injunction or an order for seizure of goods, without first hearing your arguments.
As such, a protective letter should include details of why provisional measures should not be granted, for example arguments and supporting evidence as to why the patent at issue is not infringed and/or why the patent is invalid. Other arguments may also be included, for example that the balance of convenience favours not granting provisional measures.
Be aware that applications for provisional measures are dealt with swiftly by the UPC; time limits in these actions are very short. Some of these applications may be decided without hearing the defendant's arguments, particularly if no protective letter has been filed.
You should also be aware that the deadline for appealing a decision of the CFI relating to an application for provisional measures may be very short.
The cases relating to provisional measures that have been decided so far suggest that the UPC will look in detail at substantive issues of novelty and inventive step, so if you are defending an action for provisional measures, be sure to include as much detail and supporting evidence as possible on those issues. This further emphasises the need to start looking for evidence of invalidity of a patent as soon as you become aware of a risk of litigation at the UPC.
Main infringement proceedings
As noted above, as soon as you're aware of a risk of an action for infringement at the UPC you should start gathering evidence to support a defence and counterclaim for revocation of the relevant patent.
If you can gather enough evidence that the patent is invalid quickly enough you might even consider getting your retaliation in first, by filing a standalone revocation action.
If you opt for this approach, you should take care to include in the claim for revocation all the arguments and supporting evidence you may want to rely on, as it may be difficult to introduce new evidence and arguments later in the proceedings.
The claimant in infringement proceedings initially benefits from a time advantage, in the sense that they have plenty of time to prepare their infringement action. By contrast, the defendant has only three months from service of the infringement claim to prepare and file their defence and counterclaim. The Court's focus on efficiency makes it unlikely that an extension to any deadline will be granted in the absence of exceptional circumstances. That's why it's crucial to start gathering evidence for your defence and counterclaim as early as possible.
Again, be sure to include as much information and supporting evidence as possible in your defence and counterclaim, as introducing new evidence or arguments at a later stage in the proceedings may not be allowed.
Expect a period of intense activity in the three months immediately following service of the infringement claim as you prepare your defence and counterclaim. Costs in this period will likely be high, as your legal representatives work to prepare the best case possible in the time available.
Note that, in addition to your lawyers' fees, you will also need to pay a court fee if you file a counterclaim for revocation. This is made up of a fixed fee and a variable fee based on the value of the claim (as stated by the claimant). The total fee payable is capped at €20,000. (The claimant will also have to pay a court fee for the infringement action, made up of a fixed fee and a value-based variable fee).
Once the defence and counterclaim have been filed, the claimant is given two months to file their reply to the defence, defence to the counterclaim and amendments to the patent. As the defendant, this time can be used to stress test your arguments and evidence to identify potential weaknesses and possible counterarguments. By doing this you will be in a better position to respond to any new arguments and proposed amendments to the patent that the claimant may submit in their response to your defence and counterclaim. Such a response must be filed within two months of service of the claimant's reply to the defence and related documents.
The claimant then has a further opportunity to file written arguments in a rejoinder, within one month of service of the defendant's response. The defendant can then file their own further written arguments, within a month of service of the claimant's rejoinder.
Again, note that it is unlikely that the Court will grant an extension of any of these periods unless there are exceptional circumstances, so these final stages of the written procedure will involve intense activity and related costs.
As all documents must be filed electronically at the UPC using the Court's Case Management System (CMS), it is prudent to allow plenty of time for actually filing the documents, as there are still some glitches in the CMS that can pose unexpected problems when filing documents.
After the written stage of the procedure has been completed, the Judge-Rapporteur in charge of the case will convene an interim conference to (among other things) identify the main issues and determine which facts are in dispute in the case, clarify the position of the parties as regards those issues and facts, and establish a timetable for the further proceedings.
The proceedings will conclude with an oral hearing (trial) at a date to be decided by the Judge-Rapporteur. It can be expected that the trial will follow shortly after the end of the interim procedure. The trial will typically be scheduled to last no more than one day. A decision may be given immediately after the closure of the hearing, with the reasons being provided on a subsequent date, or alternatively a decision on the merits and the reasons for the decision may be given in writing within six weeks of the oral hearing. Costs in the lead-up to the trial will likely be high, as your lawyers prepare the best possible case.
Settlement
One final point to note is that litigation does not have to mean the end of negotiations between the parties. The UPC actively encourages settlement and has established a Patent Mediation and Arbitration Centre specifically to assist parties to explore settlement of their dispute. For more insight on this, I recommend taking a look at the article on alternative dispute resolution at the UPC written by my colleague Sanjeet Plaha, a partner in our litigation team.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.