BOEHMERT & BOEHMERT UPC Update zur Entscheidung des Europäischen Gerichtshofs in der Rechtssache C-339/22 und deren Auswirkungen auf das Einheitspatentsystem

Update on ECJ ruling C-339/22: Current case law of the UPC on “long arm jurisdiction”

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The pioneering decision of the UPC in Düsseldorf on “long arm jurisdiction” and the first UPC judgment with UK-specific injunction in the Fujifilm v. Kodak cases illustrate the implementation and further development of the EGJ’s guiding principle and create a new dynamic for cross-border patent litigation in Europe and beyond.

Introduction

The highly anticipated ECJ ruling C-339/22 (BSH-Hausgeräte v Electrolux) redefined and significantly expanded international jurisdiction for patent disputes at the beginning of 2025. Since then, experts have been wondering how “long arm jurisdiction” will be applied in practice by national courts and, in particular, by the Unified Patent Court (UPC). Recent decisions by the UPC, notably in the Fujifilm v. Kodak cases before the chambers in Düsseldorf and Mannheim, provide the first concrete examples of how the ECJ’s guiding principle is being implemented and further developed.

ECJ C-339/22 – The framework

The ECJ clarified that, based on the general rules of jurisdiction in the Brussels Ia Regulation, courts of an EU member state can, in principle, sue the holder of a European patent for injunctive relief and damages against defendants anywhere in the world if the defendant is itself based in the EU. The traditional, close link between jurisdiction and the country in which the patent was granted (lex loci) therefore no longer applies without restriction in cases of infringement. Only genuine actions for a declaration of invalidity with effect “erga omnes” remain reserved to the country of origin.

Practical test: UPC and the UK parts of European patents

Düsseldorf: Pioneering decision on “long arm jurisdiction”

On January 28, 2025, the Düsseldorf Local Chamber ruled in the dispute between Fujifilm and Kodak (UPC_CFI_355/2023) that the UPC also has jurisdiction to rule on the infringement of the UK part of a bundle patent. Although the UK component of the patent was not directly the subject of the nullity action and the patent was ultimately declared invalid, the Chamber (following the guidelines of the ECJ) set new standards with regard to the scope of the UPC’s jurisdiction: It is sufficient for all defendants to be domiciled in a UPC contracting state in order to be able to assert infringement of the UK part of the patent in UPC proceedings. For a substantive decision on infringement, the question of the validity of the UK part can be examined in advance by the UPC as a “prerequisite,” but this does not have binding effect on the UK patent register .

Mannheim: First UPC judgment with UK-specific injunction

The final, practice-relevant implementation has now been effected by the Mannheim Local Chamber (UPC_CFI_365/2023, July 18, 2025), also in the Fujifilm v. Kodak dispute (concerning another EP patent of Fujifilm). It recognized its jurisdiction to assess the patent infringement and, for the first time, issued an injunction against German subsidiaries of Kodak with regard to the UK component of an EP bundle patent.

Key findings:

  • The UPC has jurisdiction over infringement of the UK validation if the defendants are based in a UPC contracting state – exact implementation of the ECJ’s requirements.
  • The UPC only examines the protectability of the UK patent “inter partes” as a prerequisite for infringement, but this has no effect on the UK register (no “erga omnes” effect).
  • No obligation for the defendant to bring parallel national nullity proceedings in the UK to challenge the patent. The defense in the UPC proceedings is sufficient.
  • Only if parallel nullity actions are pending in the UK can the UPC proceedings be suspended.
  • The operative part was explicitly drafted in accordance with UK substantive law; the calculation of the claim for damages and the ancillary consequences (including destruction and information) are also based on UK patent law .

Impact and open questions

  • Increased scope for patent holders: In future, they will be able to assert comprehensive claims (including in the UK!) before a European special court if the infringer is based in a UPC state.
  • No UK registry entry: Although the UPC’s decision is enforceable with regard to injunctive relief and damages, it is not binding on the UK patent registry (no cancellation or modification by the UPC itself).
  • Enforcement practice: The practical handling of enforcement and enforcement in the UK remains a challenge, especially if active assistance from British authorities is required.
  • Limitations: No jurisdiction for the UPC to make a “declaratory finding of invalidity” of the UK patent; such applications for a declaratory judgment may be rejected due to lack of legal interest in bringing proceedings.
  • Open: The question remains as to the exact criteria under which the UPC will also allow the extension of long-arm jurisdiction to defendants who are not domiciled in a UPC member state. This is being discussed with regard to the relevant jurisdiction rules of the Brussels Ia Regulation, in particular in the case of a so-called “anchor defendant,” i.e., proceedings against several defendants where only one (or more) of the defendants is domiciled in a UPC member state, but others are not. Usually, this requires close economic ties, a uniform set of facts, and an overriding interest in consolidating proceedings. However, a final decision by the UPC is still pending.

Conclusion

The case law of the UPC and the interpretation of the ECJ create a new dynamic for cross-border patent litigation in Europe and beyond. The judgments in the Fujifilm v. Kodak cases clearly demonstrate that the UPC now actually has “long arm jurisdiction” that is effective in practice as long as the defendant is based in a UPC member state. For patent owners, this represents a strategic gain. For defendants, the procedural risk increases significantly – there are also potential far-reaching consequences in countries outside the UPCA, particularly in the United Kingdom.

BOEHMERT & BOEHMERT UPC Update zur Verfahrenssprache vor dem UPC

When does the UPC switch languages?

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Lessons from five language‑change orders (2024‑2025)

Since the Unified Patent Court (UPC) opened its doors in June 2023, parties have quickly tested Article 49 (5) UPCA and Rule 323 RoP, asking the Court to switch from a local language to the language of the patent — almost always English. Five select orders from the Court of First Instance from the past year illustrate what will, and what will not, tip the scale.

This sample is small but diverse: two applications by Big Tech defendants (Ona Patents SL v. Apple, UPC_CFI_99/2024, and Ona Patents SL v. Google, UPC_CFI_100/2024) were refused and the appeal thrown out, due to closure of the written procedure; two requests in multinational supply‑chain disputes (Maxeon v. Aiko, UPC_CFI_336/2024, and InterDigital v. Disney, UPC_CFI_292/2025) were granted; and one medical‑device fight (MED‑EL v. Advanced Bionics, UPC_CFI_410/2023) ended in a refusal. All five were decided by President of the Court of First Instance, Florence Butin, as set forth by Art. 49 (5) UPCA, ensuring doctrinal consistency while revealing how finely the balancing exercise is calibrated.

1. Factors that consistently move the Court

• Language of the patent and prior art
The Court starts from the text of Article 49 (5) UPCA: using the grant language promotes technical accuracy. In every granted order the patent itself and most exhibits were already in English, so switching avoided duplication and mistranslation.

• Working language of both sides
Where claimant and defendant already negotiate, draft and contract in English, the Court sees little fairness in forcing one party to defend itself in German. This was evident in InterDigital v. Disney and Maxeon v. Aiko, where all corporate decision‑makers operated in English.

• Cross‑border coordination needs
Multi‑defendant cases spanning several EU states persuade the Court that a single “neutral” procedural language reduces cost and delay. The Mannheim order in InterDigital v. Disney underlined the logistical burden for the defendant (Disney) of translating pleadings for ten U.S. and Dutch entities.

• Dead‑heat → defendant wins
Echoing the Court of Appeal in 10x Genomics v. Curio (UPC_CoA_101/2024, ApL_12116/2024), President Butin treats the defendant’s preference as decisive when the overall balance of interests is otherwise even, referring to Art. 49 (5) UPCA, which states that the President of the Court of First Instance decides “on grounds of fairness and taking into account all relevant circumstances, including the position of parties, in particular the position of the defendant”. This tie‑breaker tipped the scale in Maxeon v. Aiko, even warranting a headnote (No. 2) to this order.

2. Arguments that rarely persuade

• “We are a global giant, so English is easier.”
Apple and Google invoked the lingua franca of their headquarters, but the Court refused to magnify an already dominant party’s convenience at the expense of a start‑up claimant that had prepared its German case months in advance.

• Parallel proceedings chosen by the applicant
Advanced Bionics relied on a pending English‑language revocation action it had itself filed in Paris. The Court called that a strategic choice and refused to let it dictate the language of infringement proceedings in Mannheim, as keeping German is “not obviously affecting the conditions under which the defence is exercised in the present action”.

• Presence of English‑speaking lawyers
The Court repeatedly stressed that counsel’s language skills cannot cure the disadvantage faced by the client’s internal teams or senior management (for instance in the 2nd headnote to Maxeon v. Aiko).

• Generic cost‑savings claims
Parties must show concrete prejudice, not just “translation costs.” Without evidence of real delay or risk, the Court treats such costs as the ordinary price of litigation.

3. Issues weighed differently across the five orders

• Relative size and resources
When the claimant was a scale‑up (Ona Patents) and the defendant a blue‑chip behemoth (Google and Apple respectively), the Court emphasised the power imbalance and kept German as the forum language. In Maxeon v. Aiko, by contrast, two multinationals of comparable heft neutralised this factor.

• Location of defendants
The presence of several German entities did not block a switch in Maxeon v. Aiko — because key technical staff sat in China and communication ran in English. Yet in MED‑EL v. Advanced Bionics, two German‑speaking defendants were enough to keep German as the language of proceedings.

• Timing and formality
All five orders confirm that an application filed even before the Statement of Defence, or through the CMS ‘generic application’ channel, is procedurally admissible. Nevertheless, Apple and Google were criticised for waiting until ten weeks after service, feeding the perception of tactical delay.

• Management‑level comprehension
The Düsseldorf order in Maxeon v. Aiko (2nd headnote) gave weight to the fact that none of the Aiko group’s senior legal managers spoke German, whereas Maxeon’s chief legal officer was an English speaker (echoing the CofA in 10x Genomics v. Curio once again). The Mannheim order in MED‑EL v. Advanced Bionics found no comparable mismatch and so discounted the point.

4. Practical checklist for future applicants

✔ File early — ideally with or shortly after your appearance — and explain why refraining from a language change will hamper your defence under the tight UPC calendar.

✔ Prove that decision‑makers on both sides already operate in English or another suitable language.

✔ Show that exhibits, prior art and parallel EPO or national files are predominantly in English or another suitable language.

✖ Don’t rely on your own size, your counsel’s fluency, or proceedings you chose to start elsewhere.

5. Take‑away

While dominant, English has no automatic primacy at the UPC. A request under Rule 323 succeeds only when it serves fairness, measured case‑by‑case: does the existing language place a meaningful burden on the applicant, and will the switch harm the other side? If the balance is even, the defendant gets the benefit. Until that calculus changes, litigants should prepare their narratives — and their evidence — accordingly.

UPC case law on security for costs is shaping up

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The Rules of Procedure give no guidance on security of costs. Who must provide security and in which scenarios? How much security must be provided, and by which means?

Luckily, recent case law has greatly diminished legal uncertainty and provides the following answers:

The defendant in an infringement action can under no circumstances be obliged to provide security (UPC_CoA_393/2025, order of 20 June 2025[1])

The defendant in a counterclaim for revocation (typically the claimant in the infringement action) however can be obliged to provide security (ibid).

An application for security has to sufficiently demonstrate that (a) the financial position of the opposing party gives concern that a possible order on recoverable costs from said party may not be enforceable and/or (b) such an order may not be enforceable or enforcement might be unduly burdensome at the seat of the relevant party, based on the relevant domestic law and its application in practice (last confirmed in UPC_CoA_431/2025, order of 9 July 2024[2]). A projection on the likely outcome of the case however cannot be factored into the decision on security (UPC_CoA_548/2024, order of 29 November 2024[3]).

For case (a), the following rules have been established so far:

  • Only the financial situation of a party itself is relevant, not of the corporate group it belongs to (UPC_CoA_548/2024, order of 29 November 2024)
  • If publicly available information leaves doubts on the financial capability of a party, it must sufficiently demonstrate its financial capabilities based on its internally available information (LD Munich, UPC_CFI_149/2024, decision of 3 July 2025)
  • IP rights per se do not demonstrate financial capability (ibid)
  • NPEs are not a priori insufficiently capable (ibid)
  • Future risks for a party, like potential cost risks from parallel patent infringement proceedings it initiated, must be factored into the assessment of its financial situation (ibid)

For case (b), the following rules have been established so far:

  • Claimants from the EU and EEA do not qualify, i.e. no difficulties regarding enforcement (UPC_CoA_431/2025, order of 9 July 2024)
  • Claimants from the US will most likely not qualify (various CFI decisions, see LD Munich, UPC_CFI_149/2024, decision of 3 July 2025, item 22 with further references[1]
  • Claimants from China will most likely qualify (UPC_CoA_431/2025, order of 9 July 2024)

The amount of security will typically be the recoverable ceiling of attorney fees, which in turn is based on the dispute value (UPC_CoA_431/2025, order of 9 July 2024)

Security can be provided via bank guarantee, but guarantees from non-EU banks might not be accepted by the courts (UPC_CoA_301/2024, order of 16 September 2024[1])

 

Source reference

[1] https://www.unified-patent-court.org/sites/default/files/files/api_order/7227B579856831BF403C2E1A21270A9E_en.pdf

[2] https://www.unified-patent-court.org/sites/default/files/files/api_order/11C608D05CDE6D77F1DDE007FD8B3B43_en.pdf

[3] https://www.unified-patent-court.org/sites/default/files/files/api_order/EDDAE38EC4057A8059B5063F75CCD1C3_en.pdf

[4] https://www.unified-patent-court.org/sites/default/files/files/api_order/1408F1C41F8066722AFE89AB5ED5DCD3_de.pdf

[5] https://www.unified-patent-court.org/sites/default/files/files/api_order/67AF17792505738C77F7EC41BDF720A6_en.pdf

 

Landmark ruling of CJEU with significant impact on european patent litigation strategies

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Earlier this week, the CJEU has issued its long-awaited ruling in the matter of BSH vs Electrolux (CJEU, judgement of February 25, 2025, C-339/22), thereby significantly expanding the possibilities for both the UPC and national courts in the EU Member-States to grant cross-border injunctions and decide on matters of patent infringement in countries outside the respective court’s own territory.

In its final and non-appealable ruling, the CJEU responded to several questions on the interpretation of the Brussels I-bis Regulation (“BR”). These were raised by a Swedish Court when confronted with BSH’s request to decide on the alleged infringement by Electrolux of all national parts of its European bundle patent, including in a non-EU state. The Swedish court was principally tasked to render a decision on these requests, considering Electrolux is a Swedish company and that Art. 4 (1) BR grants the courts of the EU-Member States general jurisdiction over all infringing acts committed by a person or company domiciled in their respective territory (irrespective of where the act occurs).

However, Art. 24 (4) BR limits such jurisdiction for cases concerning the “validity of patents”. So far, and following a number of earlier CJEU rulings (in particular: Roche v. Primus, Solvay v. Honeywell and GAT v. LUK), this limitation had been understood to apply as soon as a validity challenge had been brought by a defendant in any of the foreign countries concerned. As this challenge is generally available to any defendant, the above understanding and corresponding court practice led most patent owners in the past years to limit their litigation at a national court in the EU (or now also at the UPC) to infringing acts having occurred in the actual territory of the respective court.

The CJEU has now clarified the scope of Art. 24 (4) BR in relation to patent infringement cases. In the view of the CJEU, the “validity of patents” mentioned in Art. 24 (4) BR only concerns validity challenges that would lead to an erga omnes nullification of the attacked patent. These challenges still need to be brought in the courts of the patent concerned, e.g. at the Bundespatentgericht in case of a German validation of an EP.  In view of the CJEU, Art. 24 (4) BR does not however apply to an inter partes validity defense raised against a patent infringement claim. Consequently, even if an invalidity challenge was brought in a foreign country, Art. 4 (1) BR would still allow the court of the EU Member-State in which the infringement case has been brought to rule on the infringement in such foreign country, by assessing and taking into account the validity challenge in the foreign country for its inter partes decision.

This ruling is expected to have significant implications for global patent litigation and corresponding strategies, only some of which are:

  • The patent owner may now sue any EU-based defendant in the national courts of its domicile for patent infringement in any country (worldwide), including the request for an injunction and/or damages. Obviously, the question of infringement would then need to be determined on the basis of the applicable foreign law, which could then lead to the necessity of multi-national litigation teams, expert opinions on foreign law, as well as some possible “twist and tweaks” in relation to how a European court may assess and apply foreign (e.g. US) law.
  • Similarly, the owner of a non-opted-out (or opted-in) EP may now sue any defendant domiciled in a UPC member state at the UPC in relation also to EPC states which are not part of the UPC system. In fact, there is already some early precedent in this regard (even predating the CJEU’s decision), namely the LD Dusseldorf’s decision of 28 January 2025 in the matter of Fujifilm vs. Kodak, UPC_CFI_355/2023). Here, the UPC accepted jurisdiction also in relation to alleged infringement of an EP in the UK.
  • While granting broad jurisdiction to national courts and the UPC, the CJEU has accepted that an invalidity challenge in a foreign country is to be considered by the infringement court and could also lead to a potential stay of the infringement case. For defendants, this could imply the need to bring multiple invalidity attacks in national courts at the same time, if patent owners decide to bring an infringement action in only one national court for infringement in various countries. Depending on the scale of such action and the number of countries involved, this could put significant economic pressure upon defendants, who obviously will need to advance most of these costs.
  • One of the big questions left open by BSH vs. Electrolux is the precise scope of the concept of “domicile”, including the highly relevant question of whether joint defendants could be sued using the aforesaid regime, if only one of them does in fact have a place of business in the relevant EU Member-State. While earlier case law of the CJEU provides for some guidance in this regard, there will certainly be many attempts to broaden this concept and hopefully some clarifying decisions in the months and years to come.
  • Lastly, the question of enforcement lingers upon the decision by the CJEU. In case that local authorities of a state, which the decision on infringement extends to, but is not the state of the court seised, are needed to enforce the decision, it is likely that there will be significant pushback by that state, inferring jurisdictional/judicial overreach (especially in the case of a non-EU or non-EPA third party state). Where, however, no help from local authorities of a state, to which a decision extends, is needed, such possible “enforcement-gap” should not be of issue.

For patent owners and possible defendants alike, this is a significant development  that has to be taken into account when planning enforcement strategies or considering the corresponding risk of doing business in the EU. While the discussion of possible further implications of this landmark ruling is evolving rapidly, we will provide further updates within due course.

Micheline Verwohlt, Attorney at Law at BOEHMERT & BOEHMERT

Interim injunctions before the Unified Patent Court

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After more than a year of the Unified Patent Court (UPC) in operation, this article examines the regulations and previous case law on interim injunctions before the UPC and highlights the differences compared to proceedings before German courts.

Now that the Unified Patent Court (UPC) has commenced its work last year, this article deals with the special features of injunction proceedings before this court. To do this, it first highlights the special features of the relevant regulations in contrast to those for summary proceedings before national courts and then provides a brief summary of the interim injunctions already issued by the UPC with regard to deviations from the national case law of German courts

Rules of procedure for the issuance of interim injunctions at the UPC

Provisional measures at the UPC are regulated in Rules 205 et seq. of the UPC Rules of Procedure (RoP).
Rule 206 RoP initially sets out the mandatory information that an application for a provisional measure must contain. A new feature compared to the rules for injunction proceedings before German courts is contained in R. 206 No. 2e RoP, according to which an application for a preliminary injunction must contain “a brief description of the action that will be brought before the court, including the facts and evidence on which the main action on the merits will be based”. The purpose of this provision is to enable the court to assess the prospects of success in the main proceedings. However, in the vast majority of cases, the information on the facts and evidence of the action to be brought corresponds to the grounds of the application for an injunction (Tilmann/ Plassmann, Unitary patent, Unified Patent Court, R. 206 EPGVerfO Rn.29).

A further peculiarity of the UPC’s proceedings is contained in Rule 206 (3) RoP. According to this, the applicant may file a request for a decision without hearing the opposing party. He must provide reasons for the hearing to be omitted, which could be, for example, that it would jeopardize the outcome of the order or that there is a particular urgency. Outside the RoP area, an order without a hearing will not be recognized and/or enforced (Art. 45 I b, 46 Brussels Ia Regulation). The earlier correspondence with the defendant regarding the alleged patent infringement must be indicated and the warning and the application for the injunction must match. A new aspect compared to national injunction proceedings before German courts is that, according to Rule 209 RoP, it is possible to request that the proceedings be treated confidentially if the application is only for a decision without a hearing and will otherwise be withdrawn.

Decisions already issued

The following is a brief overview of the particularities of interim decisions already issued by the UPC.

One aspect in which the UPC’s decision-making practice to date differs from that of German courts is the urgency required for the issuance of interim measures. In this regard, the UPC has decided that an applicant does not have to refer to the court until he has reliable knowledge of all the facts that make legal action in the proceedings for the ordering of interim measures promising and if he can establish these facts credibly (UPC (Regional Court Düsseldorf), Order of Apr. 9, 2024 – UPC_CFI_452/2023)

R. 213.2 of the Rules of Procedure gives the court the opportunity, as part of the decision-making process, to order the applicant to present all reasonably available evidence in order to be able to satisfy itself with sufficient certainty that the applicant is entitled to initiate the proceedings, that the patent in question is valid and that the patent has been infringed or is at risk of being infringed. The applicant must regularly respond to this within short deadlines, which is why it is necessary to prepare for the proceedings accordingly. He may prepare for any possible procedural situation in such a way that he can present the requested information and documents to the court upon a corresponding order and successfully reply to the arguments of the opposing party. It follows that the applicant must in principle only then appeal to the court when he has reliable knowledge of all the facts that make a legal prosecution in the summary proceedings promising and when he can also establish these facts credibly. However, the applicant must not delay unnecessarily either, but must take the necessary measures to clarify the matter and collect material to support the application as soon as he becomes aware of the facts giving rise to the infringement. If the applicant has the necessary knowledge and documents, he must file the application for interim measures within one month (EPG (LK Düsseldorf), Anordn. v. 9.4.2024 – UPC_CFI_452/2023). Grossly negligent lack of knowledge is equivalent to positive knowledge.

The urgency in terms of time required for the ordering of interim measures is only lacking if the applicant, in pursuing his claims, has behaved in such a negligent and hesitant manner that, from an objective point of view, it must be concluded that he is not interested in the swift enforcement of his rights. In such a case, it does not seem appropriate to allow the applicant to seek interim relief (see also UPC_CFI 2/2023 (Munich District Court), order of September 19, 2023, 1513, 1524 – Verification Procedure; UPC CFI 452/2024 (DC Düsseldorf), Order of April 9, 2024, p. 27, GRUR-RS 2024, 7207, para. 126).
This seems to indicate that the UPC handles the requirement of urgency somewhat more generously than German courts, where an application for a preliminary injunction must generally be filed one month after becoming aware of the infringement.

Another deviation between German case law and the UPC’s previous decision-making practice concerns the degree of the court’s conviction of the validity of the patent in suit.

On September 19, 2023, the UPC Local Division in Munich ruled (UPC_CFI_2/2023) that, in the context of an order for provisional measures under Art. 62 UPCA, a preponderance of probability that the court is firmly convinced of the validity of a patent is necessary but also sufficient. Before the UPC, only the conviction of the board itself of the validity is decisive, since the same board would also be responsible for the assessment of validity in the event of a counterclaim in the main proceedings. Since the UPC does not distinguish between infringement and validity proceedings, a first-instance confirmation of the validity of the patent is of less importance for the expedited proceedings before the UPC. Parallel proceedings regarding validity before the EPO or before courts of the Member States will be taken into account when the chamber exercises its discretion (R. 209.2(a) RP.

Neither the UPCA nor the Rules of Procedure define the degree of conviction that is “sufficiently certain”, which is why, in principle, any degree of probability can be considered. Therefore, the specific purpose of forming a conviction must be taken as a basis when determining the latter, whereby particular consideration must be given to the fact that it is not a matter of final orders, but of the ordering of provisional measures in a summary procedure that are limited in time in accordance with R. 213 RoP (R. 205 RoP). Due to the provisional nature of the measures and the limited possibilities for obtaining knowledge in summary proceedings, the standard of probability must be lowered, which is why a probability bordering on certainty cannot be demanded. For the court to be sufficiently convinced of the validity of the patent in dispute, a preponderance of probability is necessary, but also sufficient; it must be more likely that the patent is valid than that it is not valid. GRUR 2023, 1513 para. 147). Contrary German case law, according to which the patent need only be capable of being revoked after the invalidity action has been brought, is not relevant in the scope of application of the UPCA and the RoP. (GRUR 2023, 1513) According to R. 211 no. 2 of the Rules of Procedure, the court has to make a decision on a case-by-case basis with regard to the legal validity of the patent specifically asserted.

Overall, interim proceedings before the UPC do not differ fundamentally from those before German courts, but there are some particularities.

Dr. Lars Eggersdorfer, Rechtsanwalt bei BOEHMERT & BOEHMERT

File Inspection at the UPC

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If a company is concerned that a patent may be (or has been) asserted against it, access to the files of parallel validity or infringement proceedings relating to that patent will save time and money in preparing a defense.

The files in opposition proceedings before the European Patent Office or the German Patent and Trademark Office are usually open to the public without restriction, so that the prior art submitted and the arguments on the interpretation of the contested patent and its (lack of) validity can be ascertained immediately. In nullity proceedings before the German Federal Patent Court, access to the file must be requested. Although this is usually granted in full, the patentee can regularly delay the inspection for several months from the filing of the request by means of a mere pro forma objection. In infringement proceedings, on the other hand, German courts regularly do not grant access to the file; only their opinions are published, so that non-infringement arguments have to be awaited.

What is the situation before the Unified Patent Court (UPC)?

According to Rule 262.1(b) of the Rules of Procedure of the UPC (RoP), unlike decisions and orders of the court (Rule 262.1(a) RoP), pleadings and evidence (in all types of proceedings) are not to be made public but must be made public upon a reasoned request and after hearing the parties. Regarding formalities, the Court of Appeal has already ruled (order of February 8, 2024, file no. UPC_CoA_404/2023) that such a request must be made by a lawyer admitted to practice before the UPC.

It was now eagerly awaited which substantive reasons justify the application for file inspection. There had been divergent decisions on this at the first instance level. The Nordic-Baltic Regional Chamber had in principle allowed a generally expressed professional or scientific interest to suffice (order of October 17, 2023, file no. UPC_ CFI_11/2023), while the Munich Central Chamber did not (order of September 20, 2023, file no. UPC_CFI_1/2023 and order of September 21, 2023, file no. UPC_CFI_75/2023). However, both chambers had demonstrated legal doctrinal depth for their respective lines of reasoning and, in particular, derived various arguments from the systematics of the Rules of Procedure and their history. It therefore appeared open as to how the Court of Appeal would position itself.

In its decision of April 10, 2024 (file no. UPC_CoA_404/2023), the Court of Appeal has now basically followed the line of the Nordic-Baltic Regional Chamber, according to which a generally expressed interest in accessing the file is sufficient as long as it is not abusive (paras. 43, 44 and 55 of the decision). The court did not indicate when abuse is given, but since practically any expressed professional or scientific interest is sufficient, abuse constellations should be limited to absolutely exceptional cases. The court justifies this broad approach primarily by stating that business secrets and personal data can be protected by means of a separate procedure in accordance with Rule 262.2 RoP (paragraphs 45 and 46).

However, the fact that the specific case concerned proceedings that had already been concluded could be seen as a limitation of this broad approach. The Court sees no need to preserve the integrity of the proceedings by refusing access to the file where the proceedings have already been concluded whether by a judicial decision or by a settlement (paragraphs 48, 49 and 52). However, the statements in para. 53 then indicates that, in the case of ongoing proceedings, a personal interest in the patent, such as the threat of a claim arising from it, may be necessary to justify a request for access to the file.

In practice, this means that companies may be able to obtain access to the file anonymously through their lawyer in the case of closed proceedings, because a general interest can be invoked, but in the case of ongoing proceedings, the potential personal interest may have to be disclosed – which may be disadvantageous if, for example, there is a fear that the request for access to the file may alert the patent proprietor to a previously unknown patent infringement.

Companies must therefore carefully consider, with the help of legal advice, whether to request access to files in ongoing proceedings and how exactly to justify the request.

Looking back: The first six months of the unitary patent system

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The unitary patent system comprises, on the one hand, a new European patent with unitary effect (often referred to as the “unitary patent”, for short) in all 17 participating EU Member States (Austria, Belgium, Bulgaria, Germany, Denmark, Estonia, Finland, France, Italy, Latvia, Luxembourg, Lithuania, Malta, the Netherlands, Portugal, Sweden and Slovenia), and on the other hand, a new Unified Patent Court (UPC), which decides on these unitary patents, but ultimately also on all conventional European patents with national validations (so-called “bundle patents”). After decades of planning, the new system has for the first time created a quasi EU-wide patent law.

After a good six months, it is time for an initial review. Have expectations been fulfilled? Is there demand for the unitary patent and the Unified Patent Court? What are the first user experiences with the new system?

Every European patent application goes through the familiar application and examination procedure before the European Patent Office. Following the grant of the patent, the applicant can now opt for the patent with unitary effect instead of national validations in the participating EU member states – in addition to national validations in those countries that do not (yet) participate in the unitary patent system. There are now already over 17,000 patents with unitary effect. They come from all technical fields, with medical technology leading the way with a share of approx. 12%. However, since June 1, 2023, unitary effect has only been requested for approx. 17% of all granted European patents. This means that most patent holders are still opting for the traditional bundle patent. On the one hand, this reluctance could be due to the fact that the patent with unitary effect is perceived as too expensive – it usually only pays off with patent protection in at least four EU member states. On the other hand, applicants may want to wait and see how the case law of the Unified Patent Court develops before relying on the unitary patent.

The Unified Patent Court has exclusive jurisdiction for all European patents with unitary effect. For bundle patents, the plaintiff can decide during a transitional period of at least seven years whether to use the Unified Patent Court or the national courts. During this transitional period, the patent proprietor can also decide to exclude his patent from the jurisdiction of the Unified Patent Court by means of an opt-out declaration.

The Unified Patent Court faced considerable IT difficulties at its launch, caused by its cumbersome and rigid electronic case management system (CMS), which led to a system crash on the very first day, after having already necessitated a three-month postponement of the launch. The case management system cannot be circumvented, as the UPC is largely designed as an electronic court, and continues to demand a great deal of patience and improvisation skills from all users, including lawyers as well as judges and clerks.

Apart from these technical difficulties, however, the launch of the Unified Patent Court has been a success and has lived up to expectations. Over the first six months, a total of more than 100 cases have already been filed, including infringement actions, nullity actions and a number of applications for provisional measures. Most of the cases are pending before the German chambers, with the Munich local chamber currently leading by a wide margin. Interestingly, and to a certain extent unexpectedly, isolated nullity actions without parallel infringement proceedings are also enjoying some popularity. In the meantime, 23 such actions have already been filed with the central divisions in Paris and Munich. The UPC is clearly establishing itself as an attractive forum for reviewing the validity of European patents, sometimes in parallel with ongoing opposition proceedings before the European Patent Office. With over 70 decisions, the UPC has already accumulated an impressive case law in the first few months of its existence. Most of the decisions concern procedural law. The Court of Appeal has also already ruled in two cases.

Overall, it is to be expected that the Unified Patent Court will establish itself in the coming years as an authoritative court with global reach in patent disputes.

We will keep you up to date on the development of the Unitary Patent System here and on our special UPC page.

EPC: Amendments to rules for postal and electronic notification by the EPO

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Amendments to Rules 126(2), 127(2) and 131(2) EPC concern the postal and electronical notification by the European Patent Office (EPO), and the calculation of time periods triggered by a notification

 On 13 October 2022, the Administrative Council adopted changes to Rules 46, 49, 50, 57, 65, 82, 126, 127 and 131 of the Implementing Regulations to the European Patent Convention (CA/D 10/22). The amendments concern, inter alia, Rules 126(2), 127(2) and 131(2) EPC which relate to the notification of documents served by the EPO by postal services and by electronic means, and to the calculation of periods triggered by the notification. New Rules 126(2), 127(2) and 131(2) EPC enter into force on 1 November 2023 and apply to documents served by postal services or electronic means on or after that date.

These amendments remove the 10-day notification fiction according to the current Rules 126(2) EPC and 127(2) EPC, according to which a document is deemed to be served successfully on the tenth day after the date stated on the document, which is taken into account in calculating periods triggered by the notification of communications from the EPO. Instead, new Rules 126(2) and 127(2) EPC provide for a new notification fiction, according to which postal and electronic notification are deemed to occur on the date of the document. The EPO expects that the new notification fiction will result in a simplification for users since it brings the EPC and PCT notification regimes closer together.

Amended Rules 126(2) and 127(2) EPC also govern the burden of proof in exceptional cases in which notification of the documents is in dispute. As before, the EPO retains the obligation to prove the fact and the date of delivery in such instances. If the EPO is unable to prove that a document was delivered to the addressee within seven days of the date it bears, a so-called “safeguard” will be applied, resulting in that a period triggered by the deemed receipt of that document will be extended by the number of days by which these seven days are exceeded.  The general principles governing time-limit extensions set out in Rule 134 EPC will apply to the period recalculated applying this safeguard.

Rule 131(2) EPC has been adapted to the effect that the rule now explicitly refers to the fiction of notification of the documents as the relevant event for the purposes of time limit calculation.

Amended Rules 126(2), 127(2) and 131(2) EPC are intended to take into account the principle of instantaneous notification in the digital world. The EPO mailbox is deemed a reliable service available to all professional representatives and applicants in the EPC contracting states and covering 99% (by volume) of all documents issued by the EPO. For applicants and representatives, new Rules 126(2), 127(2) and 131(2) EPC impose a change in the practice of recording time limits and thus also the training of staff, in particular with regard to the handling of exceptional cases in which notification of the documents is in dispute, even if the latter are unlikely to occur in daily practice.

Important URLs:

https://www.epo.org/law-practice/legal-texts/official-journal/2023/03/a29.html

https://www.epo.org/law-practice/legal-texts/official-journal/2022/11/a101.html

Unified Patent Court to start work on June 1, 2023

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With the approval of Germany on February 17, 2023, all requirements for the entry into force of the Agreement on a Unified Patent Court are fulfilled. The UPC will thus commence its activities on June 01, 2023.

On February 17, 2023, Germany ratified the Agreement on a Unified Patent Court (UPCA), thus clearing the way for the Unified Patent Court (UPC) and the European patent with unitary effect. As of June 1, 2023, the UPC will rule on the validity of European patents and their infringement in a unified procedure.

So far, 17 EU member states have committed to participating in the European Unitary Patent system. Ten EU member states are expected to participate in the near future. Another ten states in Europe participate in the European Patent Convention, but not in the UPC.

The aim of the new European Unitary Patent System is to further harmonize the patent system in Europe and to sustainably strengthen innovation in Europe.

Further information on the new Unitary Patent System with special focus on the Unitary Patent as well as on the Unitary Patent Court can be found in the “UPC” section of our website. If you have any questions, please do not hesitate to contact us at upc@boehmert.de.

UPC: Start of Sunrise Period postponed to March 1, 2023

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Entry into force of Sunrise Period as of March 1, 2023 and EPC as of June 1, 2023

Deviating from the previous timetable, which foresaw the start of the Sunrise Period at the beginning of the new year, the Unified Patent Court announces a postponement of two months. The Sunrise Period will thus start on March 1, 2023, followed by the entry into force of the Agreement on a Unified Patent Court (UPCA) on June 1, 2023.

The reason given for this measure is the larger time frame in which users are encouraged to equip themselves with client authentication as well as a qualified electronic signature. Strong authentication will be essential for accessing the Unified Patent Court’s Case Management System (CMS) and signing documents in the future.

You can access the announcement of the Unified Patent Court online here.