Below, Prof. Willem Hoyng provides his unfiltered views on the decisions that were published on the website of the Unified Patent Court (“UPC”) last week. His comments offer a unique insight into the UPC’s case law, as he chairs the Advisory Board of the UPC and participated in drafting the Rules of Procedure of the UPC. Interested in more of this? Stay tuned and subscribe here for weekly updates.
For all decisions of the UPC’s Court of Appeal from the start in 2023 until 1 January 2025, Willem Hoyng’s more comprehensive summaries and comments are bundled in the book “Case law – Court of Appeal of the UPC 2023-2024”.
3 March 2025 (only reported last week)
Local Division Mannheim, X v Y
Saisie
Facts
X requests a saisie under Art. 60 UPCA and R. 192 RoP, arguing that infringement is highly probable. The opt-out of the patent has been withdrawn.
The JR
The order is rejected because the applicant failed to set out that there is a sufficient probability of infringement of the asserted claim. If a certain technical result can be achieved in multiple ways, the applicant has to submit facts that make it plausible that the technical result is reached by implementing the patented invention.
Comment
- This is an interesting decision, as the requirements for obtaining a saisie (ex parte) vary significantly between UPC countries. In France, no infringement case is generally started without a saisie, which is relatively easy to obtain (although in recent years, there has been a tendency to apply stricter requirements regarding proof of infringement). At the other end of the spectrum, Germany (which does not have a saisie tradition) has not seen much change after implementing Art. 7 of the Enforcement Directive, and saisies are rarely granted.
- In my opinion, an ex parte saisie is a very invasive measure, and a certain level of restraint is necessary to avoid fishing expeditions. I also believe it should be a last-resort measure—if the evidence can be obtained in a less invasive way, that option should be used first.
- I think the JR’s decision in this case is correct, as there was no actual evidence that the infringing method of achieving the patented technical result was used.
- I also believe that “plausibility” is the correct criterion. It lies somewhere between no evidence and the “more likely than not” test for obtaining a PI.
11 March 2025
Local Division Munich, Syngenta v Sumi
Revoking PI
Request
Sumi argues that Syngenta did not file a case on the merits in time. The 20 working days expired on 27 September, and the case on the merits was only started on 30 September.
The JR
Dismisses the request. Review by the panel.
The Court
- Misapplication of R. 15.2 RoP (“the Statement of Claim shall not be deemed to be lodged as long as the court fee has not been paid”).
- Nowhere R. 15.2 RoP states that the court fee must have been received.
- Moreover, R. 213.1 RoP states that a case on the merits “has started”. Filing the Statement of Claim is the start of the proceedings.
- Syngenta started the proceedings on time and has paid the fees in due time.
Comment
- Very good attitude of the Munich Division in interpreting the Rules in a way that keeps the PI alive.
- A wise lesson for representatives: note all critical deadlines in your diary, and for important (fatal) deadlines, set a reminder a week before the deadline arrives.
- What happens if you forget the deadline? Can you start a new PI? (what about the Urgency requirement, or ne bis in idem?) Better not get in that situation, but if so, start against other defendants (wholesalers etc.).
11 March 2025
Local Division Munich, Hurom v NUC
Applicable law
Background
1. Hurom alleges infringement in certain UPC countries (where the patent had been validated) and in Turkey, Poland, Spain, and the UK.
2. The Court separated the case for Poland, Spain, and the UK because, at the time of the hearing, the result of BSH Hausgeräte was not known (see separate order reported this week).
Decision
- The Court holds that there is no proof of infringement by the defendants (a Korean company) in Turkey.
- Art. 71(b)(3) Brussels Regulation (recast) (“BR”) does not provide jurisdiction, as there is no sufficient connection with a UPC member state.
- A defendant may raise lack of jurisdiction in their (first) defence brief instead of by way of a preliminary objection. Even if the wrong arguments are used, the Court should still consider the jurisdiction question.
- The UPC can deal with infringements that occurred before the UPC’s entry into force (see Art. 3(c) UPCA).
- The Local Division Mannheim is competent because the infringements take place in Germany.
- A request for an injunction can be general and does not have to be limited to the infringing product.
- The transfer of the patent is valid (so the defendant’s argument that the claimant was not the owner of the patent fails).
- The Court formulates the problems the patent solves and interprets the meaning of certain claim features in light of those solutions.
- The law applicable to infringing acts after 1 June 2023 is Art. 25 to 28 UPCA.
- Acts before the UPC’s entry into force will be judged according to national law, as retroactive effect without a specific provision is contrary to the Vienna Convention on the Law of Treaties.
- For alleged infringements that started before and continued after 1 June 2023, UPC law should apply unless this causes hardship for the defendant or claimant. However, it is up to them to provide evidence of national law being more favourable.
- Art. 26 UPCA includes acts that make infringement possible and support it.
- Defendant hands over infringing goods to its distributors in Europe from Korea. This also constitutes (indirect) infringement.
Comment
- This is the case against the Korean company. The Court decided on the same day the separate case against the German and French companies selling the same alleged infringing products.
Art. 71b(3) BR - The question of whether or not this is an infringement in Turkey is, in my opinion, a factual question that should, in principle, be answered only after determining whether or not the Court has jurisdiction (with the exception of cases where jurisdiction is based on Art. 7(2) BR, which—see CJEU Shevill—does not have extraterritorial effect and is not applicable to Turkey).
- Art. 71b(3) BR remains a bit of a dark horse. However, I think interpreting “damage arising outside the Union” to mean only damage suffered outside the Union as a consequence of infringement in the Union does not make much sense.
- The wording “from such an infringement” should, in my opinion, not be read as referring to infringement in the Union but more generally to any infringement of the European Patent. If damages outside the Union result from an infringement within the Union, it should, of course, be possible to claim those damages within the Union (before the Court that has jurisdiction over the infringement in the Union). If one interprets Art. 71b(3) BR as only referring to damages resulting outside the UPC as a consequence of infringement in the UPC, Art. 71b(3) BR would be de facto meaningless.
- In the case at hand, the Court avoids the issue by stating that the dispute does not have a “sufficient connection with any such member state” (where property belonging to the defendant is located). Here again, I am somewhat at a loss as to what exactly is meant by this condition. However, in this case, I see that the defendant has property in Germany (because, from the decision of the same day, I see that there is an NUC GmbH, and I assume that the shares are held by the Korean parent, which is the defendant in this case). Moreover, this defendant is also accused of infringement in Turkey. Is that not a sufficient connection? Ultimately, the Court of Justice will need to clarify this article, but at the very least (in my opinion), it should have a certain practical meaning (I hope) for the holder of a European patent!
R. 19 RoP - The Court stirs up discussion regarding R. 19 RoP, stating that with respect to (international) jurisdiction, a party can also dispute jurisdiction in their defence brief instead of through a preliminary objection. This is, of course, impractical because it delays a decision on jurisdiction. As a result, costly proceedings may continue only for the case to be dismissed on jurisdictional grounds, making all prior efforts futile! However, here too, the ECJ may have the final word.
Applicable Law - The Court engages in a discussion of academic length about applicable law. I probably attended a somewhat less academic university, but I was taught that if no specific transitory provisions exist, the new law applies immediately and has no retroactive effect. That was tough luck for the companies who were parallel importing from outside the EU when the EU introduced EU-wide exhaustion in trademark law. (I remember an exception to the principle that a law applies immediately in criminal law: If someone committed a crime under the old law and was judged under the new law, they would be entitled to the less severe penalty if the old law had a lower maximum sentence.)
- So, while the Court’s reasoning is interesting, it is not surprising—except perhaps for its discussion of “continuing infringement.” The Court itself acknowledges that “continuing infringement” does not really exist, except possibly in the case of a patented method that is continuously applied—but even in such cases, machines are stopped periodically for maintenance. Should such a distinction (exception) be made and lead to retroactive effect of the UPCA?
- The Court highlights the difficulty of knowing all national laws. In that respect, I believe national law should be presumed identical to UPCA law, unless the defendant proves otherwise.
Competence of the Local Division - The Court states that the Local Division in Mannheim is competent as the infringement takes place in Germany. That is correct. See Art. 71b(2) in conjunction with Art. 7(2) BR, especially as there are no territorial limitations in Germany with respect to the competence of the German Local Divisions under Art. 33.1(a) UPCA dealing with the internal competence of the Division.
- However, I disagree that such competence is limited to Germany. For the UPC, there is only one Court, the Court of First Instance. If the infringement takes place within the territory of that Court, then, under Art. 7(2) BR, that Court is competent for the whole territory where the EP has been validated. The fact that the Court has different Local Divisions and that the internal rules designate a Local Division based on the country of infringement does not alter the fact that the Court as a whole (and thus that Local Division) remains competent under Art. 7(2) BR for the entire UPC.
Art. 26 UPCA - The Court states that Art. 26 UPC encompasses acts which make the infringement possible and support it. This is not what Art. 26 UPCA explicitly states (which, incidentally, almost all EP States have incorporated into their national patent acts due to the Community Patent Convention, which never entered into force but required harmonization).
- Most countries would treat such acts (which are not explicitly covered by Art. 26) as torts or unlawful acts. However, in my opinion, such a broad interpretation in the spirit of Art. 26 is commendable, as it ensures that such acts are covered in a harmonized way under the UPC.
Infringement - The Court considers the handover of products in Korea by the Korean defendant to its UPC distributors as (indirect) infringement in the UPC. The Dutch Supreme Court has ruled that direct infringement occurs in such cases if the Korean company arranges the transport to the UPC—even if the UPC distributors pay for the transport. This, in my opinion, is a practical view, as that act (arranging for the transportation of the goods) constitutes “placing the product on the market.”.
11 March 2025
Local Division Mannheim, Hurom v NUC
(Same case as above)
- As the decision in BSH Hausgeräte was not known during the oral hearing, we could (should) not base our decision on it without having heard the parties.
- Reopening the case would unnecessarily delay a decision for the UPC. If a case is ready for a decision, the Court should not withhold such a decision on a regular basis.
- The parties did not oppose separation.
Decision
The claimant’s requests with respect to Poland, Spain and the UK are separated and will be dealt with in one separate proceeding.
Comment
This seems like a logical and wise decision. This approach could also be applied within the UPC. For instance, in a case where, for one UPC country, a defence of prior use or a compulsory license is raised, or where other complications exist, while in other countries, the infringement situation is clear. In my view, such separation could also occur at an earlier stage of the proceedings.
However, the Court could have also immediately set dates for an exchange of pleadings, where the parties could comment on the implications of the ECJ decision.
Parties litigating in the UPC for infringements outside the UPC are also entitled to timely decisions. The UPC should recognize that the ECJ has made it an even more efficient court for European Patent infringement and should extend its service—ensuring decisions within 14 months—to non-UPC (but EP) countries as well.
11 March 2025
Local Division Mannheim, Hurom v NUC GmbH and Warmcook (FR)
UPC_CFI_159/2024
Separation of cases
Result / Comment
The Court, following the same reasoning as in UPC_CFI_162/2024 (see above), separated the case concerning Spain, Poland, Turkey, and the UK from the case regarding the other UPC_CFI_159/2024 countries, for which judgment was also issued the same day. The judgment against the German and French companies contains (almost) the same reasoning as in the separate case against the Korean parent company reported above. However, in this case, there is no finding that there was no infringement in Turkey, meaning Turkey remains part of the now-separated case.
11 March 2025
Court of Appeal, 10x Genomics v Virgin
UPC_CoA_700/2024; 1/2025
Return of fees
Facts
On 5 March 2025 the Court of Appeal accepted the withdrawal of appeal against these orders of the Local Division Hamburg.
On 6 May 2025, 10x Genomics requested reimbursement of part of the court fees in accordance with R. 370.9(b) RoP.
The Court
Ordered the Registry to pay back the requested fees as soon as possible.
Comment
- Could this not have been requested at the time of withdrawal? This creates double work for the Court, and 10x Genomics is not punished for it.
- In my view, there was no entitlement to a refund, as R. 309 RoP applies to withdrawal of the action. Procedural requests are not an “action” – certainly not the action. See R. 370.9(a) RoP: “If the action is heard by a single judge.” See also R. 345.6: “If all parties agree to having the action heard by a single judge”, etc. This clearly indicates that “action” refers to the complete case on the merits.
14 March 2025
Düsseldorf Local Division, Roche v Tandem
UPC_CFI_504/2023
Translation costs
Facts
Roche has sued six defendants, including US, Dutch, German, French, and Danish companies (not belonging to the same group).
Defendants 4 and 5 (the French and Dutch companies—the latter being a subsidiary of a French company) requested simultaneous translation because their French in-house representatives do not speak enough German to follow the hearing.
All defendants argue that the costs of simultaneous translation should be classified as court costs, while Roche argues that such costs should not be considered court costs, meaning Roche should not have to pay if they lose.
Decision of the JR
- Allows simultaneous translation because that is necessary in order to make sure defendants can follow the hearing.
- As this is an international tribunal and your court representatives speak German you have to bear the costs, so the costs are not considered court costs.
Comment
- I have my doubts with respect to this decision.
- It is the claimant who has chosen to start proceedings in German. The claimant is a large international company that operates in English. English is the international business language. The claimant sues six companies, five of which are located in countries where different languages are spoken, and for these companies, English is the language in which they conduct business.
- The patent at issue is granted in German. So the defendants were prevented from asking a change of the language of the proceedings into English.
- So five defendants are sued outside their natural forum as a defendant in the German language. The claimant knows that most of them will not master German to the same extent as English.
- Under all these circumstances, I think that if the claimant loses, they should pay for the translation costs (which is, by the way, a tiny percentage of the total costs!).
- For the UPC to be accepted worldwide as an attractive forum for resolving patent disputes, it is preferable that cases are litigated in English. So we should not be rewarding a claimant suing in German to make life more difficult for non-German-speaking defendants.
– All comments above are Prof. Hoyng‘s personal opinions –
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