UPC update: First substantive decision from the Court of Appeal and news on Milan

March 2024

In this month's update, we report on the first substantive decision of the UPC's Court of Appeal in which it overturned the grant of a preliminary injunction. We also report on the latest figures from the UPC, the signing of the Headquarters Agreement for Italy, and what has been widely criticised as a disappointing decision in the ongoing debate over transparency of pleadings, in advance of the substantive resolution of this issue by the Court of Appeal.

Number (and locations) of cases

On 1 March 2024, the UPC issued its second caseload update of the year detailing the number of cases since it opened its doors on 1 June 2023. There have now been 274 cases brought before the UPC, including 96 infringement actions and 24 revocation actions, as well as 129 counterclaims for revocation. This is a considerable increase in the number of cases since the last report at the end of January 2024, when the UPC reported a total of 217 cases. We expect the number of cases to continue to rise as confidence in the system appears to grow.

The Munich Local Division continues to lead the way on infringement actions, with the Paris Central Division still receiving the bulk of the revocation actions. Since our last report, the Copenhagen Local Division has received its first case.

Infringement actions and applications for provisional measures

Revocation actions

Since our February report, the language of proceedings appears to have stabilised, with 43% of cases adopting English, 47% adopting German, and 10% adopting other languages of the UPC (including French, Italian and Dutch).

Meanwhile, the Unitary Patent dashboard indicates that, as at 7 March 2024, some 21,146 Unitary Patents had been registered. Johnson & Johnson (followed by Siemens, Qualcomm, Samsung and LM Ericsson) continue to lead the way as applicants.

Headquarters Agreement - Milan Central Division

Following the UK's departure from the UPC framework, it was agreed that the suggested location of one of the seats of the UPC's Central Divisions should be switched from London to Milan. As this arrangement was not put in place before the UPC began operations on 1 June 2023, there needs to be a Headquarters Agreement between Italy and the UPC (this was signed on 26 January 2024, formalising the location of the third seat of the Central Division).

When up and running, Milan will hear all cases in WIPO IPC class A i.e., concerning patents relating to pharmaceuticals/chemistry including genetic engineering (apart from those involving SPCs which will be dealt with by the Paris seat). Each Central Division has a panel of two legally qualified Judges and one technically qualified Judge - these have yet to be confirmed for the Milan seat.

Court of Appeal – Access to pleadings

As reported in our February update, one of the key early issues to be resolved under the UPC framework concerns access to pleadings by non-parties, within a wider discussion about the UPC's approach to questions of transparency. Whilst the Court of Appeal's substantive consideration of this issue is awaited, it ordered on 8 February 2024 that a member of the public requesting access to the register must be represented before the UPC (despite in the Ocado/Autostore matter before the Court, Ocado did not object to the individual involved bringing the application without representation). The applicant was given 14 days to appoint a representative and for them to lodge a statement of response in the same period and, on the assumption that the applicant would appoint a representative, the parties were summoned to an oral hearing on 12 March. We will report on the outcome of that hearing in due course but the decision to insert this further hurdle into the ability to obtain access to court documents has been criticised.

Court of Appeal – Overturning of the first inter partes preliminary injunction

The Court of Appeal has overturned the first inter partes preliminary injunction (UPC_CFI_2/2023)) that had been granted by the Munich Local Division, which would have prevented Nanostring from selling in all 17 UPCA Member States. At first instance, the Munich panel reported that it was satisfied 'with a clear preponderance of probability' that 10x Genomics' patent was valid, and it was clear that provisional measures were necessary. The Court of Appeal disagreed, however, determining that it was, 'on the balance of probability, more likely than not that the subject-matter of claim 1 in the version asserted in the main request will prove to be not patentable'. The Court also held that it was more likely than not that the auxiliary request will not prove to be valid. 10x Genomics is required to bear the costs of the proceedings, being set at EUR 7 million.