Professional Service
UPC PROCEEDINGS
The Unified Patent Court (UPC) provides a new opportunity for patent holders to obtain pan European relief for patent infringement. Likewise, the UPC offers a new mechanism for central revocation of a European patent beyond the EPO’s 9-month opposition period.
Despite the UK not falling within the jurisdiction of the UPC, as European Patent Attorneys, our team have the ability to represent parties before this new court. This places us in the unique position of being able to manage both UK and UPC litigation actions, providing a co-ordinated and efficient approach to dispute resolution across the UK and EU.
Building on our wealth of experience in contentious opposition proceedings before the EPO, we are well-placed to act in connection with the wide range of actions possible before the UPC, infringement, revocation and declaration of non-infringement actions. For patent holders, conventional litigation across Europe is expensive and complex due to the need to initiate and co-ordinate separate actions across multiple jurisdictions. The UPC greatly simplifies matters, with only one action being needed for all participating EU member states, thus making enforcement of European patents significantly more affordable.
The UPC also adds to the toolkit available for those wishing to challenge the validity of granted European patents. Here, we are able to use UPC proceedings in complement with other types of proceedings, including EPO opposition proceedings and the UKIPO opinion service, in order to maximise the prospects of achieving freedom-to-operate.
Despite the UPC being a new forum for resolving patent disputes, we are well-prepared to adapt to this new regime based on our wealth of experience in contentious matters before the European Patent Office (EPO). This experience puts us in the optimal position to act in connection with the wide range of actions available before the UPC, including infringement, revocation, and declaration of non-infringement actions. Our team is accustomed to handling high-value, complex proceedings and are always looking for innovative ways to provide comprehensive and clear strategic advice.
Recent Insights
Read the latest insights from the Schlich team reporting recent cases and updates to UPC Proceedings.
The Battle Between NanoString and 10x Genomics Continues with NanoString Taking the Lead Following Successful UPC Revocation Action
The latest revocation action decided on by the Munich Central Division of the UPC gives NanoString the upper hand in their ongoing dispute with 10x Genomics, while also offering a useful insight into how the UPC appear to be approaching the assessment of inventive step
UPC Court of Appeal Shifts Focus to Germany
We recently reported on the UPC’s decision to hear the Nokia v Mala case, regardless of parallel German proceedings pending for the same patent. Interestingly, the UPC Court of Appeal has reacted quickly with a different view. This update is reported here.
Your Court or Mine? UPC takes home advantage
Nokia filed two separate revocation actions challenging Mala’s EP 2 044 709 patent, valid only in Germany. The first was filed on 29 April 2021 in the German Federal Patent Court but was unsuccessful, as the patent was upheld (appeal pending). The second was filed on 15 December 2023 in the Unified Patent Court (UPC). This article focuses on Mala’s objection to the UPC's jurisdiction, in which they argued that since a revocation action was already ongoing in Germany, the UPC should reject Nokia’s action as inadmissible.
First Revocation Decision of the UPC Confirms the European Approach to Antibody Inventions
This case represents the first revocation issued by the UPC and so gives several useful insights into the way in which the court will apply the law.
Romania to Join the UPC
On 31 May 2024, the Romanian government deposited its instrument of ratification of the UPC Agreement with the Council of the European Union, meaning that Romania will become the 18th member of the Unitary Patent System on 1 September 2024. Thus, those validating their European patents with unitary effect are advised to request a delay to registration of their unitary patents to ensure Romania is covered.
Gaining access to documents filed in a UPC action
All decisions and orders of the UPC are published on the UPC website. Registered representatives can also see, via the Case Management System, all documents that have been filed on a specific action. Gaining access to these documents themselves such that the content can be reviewed is however more difficult and third parties wishing to gain such access must submit a reasoned request pursuant to Rule 262.1(b) of the Rules of Procedure. How such requests are currently being dealt with by the UPC is the subject of the presently discussed decision.
UPC Court of Appeal Suggests the Description is Relevant to Deciding Whether Certain Embodiments Are Excluded from the Scope of the Claims
The question of whether and to what extent the description should be used to interpret the claims of a patent is a disputed topic in patent law, with there being a need to construe the claims as they are written whilst also reading them in the context of the patent as a whole. In its first substantive decision, the UPC’s Court of Appeal suggests the description can be used to decide whether arguably impractical embodiments are excluded from the scope of the claims.
The UPC have been Quick to Issue their First Preliminary Injunction
One of the first preliminary injunctions was issued by the Unified Patent Court on 22 June 2023. The decision was made ex parte and, remarkably, on the same day as the application for an injunction was filed by the proprietor, despite the respondent’s efforts to avoid the issue of an injunction by filing a protective letter.
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Our team of UK and European Patent Attorneys and Chartered Trade Mark Attorneys are highly knowledgeable and experienced in assisting clients with all aspects of their IP needs.
Contact us now to find out more about how we could help you and your business.
