UPC update: News on Ireland's referendum, claim construction, and case numbers

February 2024

As we enter the second month of the year, we continue to track important developments relating to the Unified Patent Court (UPC) and Unitary Patent. Substantively, we have seen the first instance of the prosecution history of a patent being used to inform claim construction at the Munich Local Division, and we await some key decisions from the Court of Appeal. In the meantime, Ireland has announced the date of its referendum vote on whether to join the UPC/Unitary Patent regime.  

Number (and locations) of cases

On 1 February 2024, the UPC provided updated details of the number of cases since its opening on 1 June 2023. The UPC has now received a total of 217 cases, including 83 infringement actions, 24 standalone revocation actions, 86 counterclaims for revocation, and 16 applications for provisional measures.

The Munich Local Division continues to lead the way on infringement actions, with the Paris Central Division still receiving the bulk of revocation actions.  The Local Divisions of Copenhagen, Lisbon and Ljubljana are still yet to receive their first case.

Revocation actions                                                                                                    

Since our last report in January, the number of cases adopting English as the language of the proceedings has risen from 40 to 43%, with the number of cases adopting German decreasing from 49 to 47%.

Meanwhile, the unitary patent dashboard indicates that, as at 5 February 2024, some 18,962 unitary patents had been registered. Johnson & Johnson (followed by Siemens, Qualcomm, Samsung and LM Ericsson) continue to lead the way as applicants.

Ireland's referendum on UPC

On 23 January 2024, the Irish Government announced its plans to hold a referendum in June (the vote will be held on the same date as the European and local elections) on Ireland's participation in the UPC/Unitary Patent regime. Ireland's ratification would increase the number of EU countries covered by a Unitary Patent to 18 (albeit the zone of protection will not be extended to Ireland for Unitary Patents in existence before ratification), and would mean that Ireland is the only native English speaking (and only common law) country within the jurisdiction of the UPC. This could make it attractive as a litigation forum for certain businesses, particularly those in the US.  It has been reported that participation in the UPC could have a 'conservative' value of €1.663 billion per year for the Irish economy.

Claim construction

On 20 December 2023, the Munich Local Division issued its decision in SES-Imagotag SA v Hanshow Technology Co. Ltd. SES alleged infringement of its patent EP 3 883 277 and sought a preliminary injunction. In dismissing the preliminary injunction application, the court construed the claims with assistance from the patent prosecution file, using the original wording of the claims of the European patent application as filed as an aid to interpret amendments made to the claim wording during the grant procedure.

Prosecution history has not typically been taken into account in Germany to interpret claim features, and so a decision taking that approach issued by a German based UPC court is perhaps somewhat surprising. This is of course only a single decision (and it has been appealed) and so it will be interesting to see how other courts approach claim construction in the future. The Court also required the patentee to reimburse the Defendant's costs of filing protective letters. 

Applications to intervene

In Ocado Innovation Limited v Autostore AS, two applications by third parties to intervene in an appeal concerning pubic access to the register have been refused as inadmissible.

The Nordic-Baltic Regional Division had granted a non-party access to the statement of claim in the case but this was subsequently stayed after Ocado appealed to the Court of Appeal. Two third parties applied to intervene in the Appeal, claiming that the Court of Appeal's decision would be helpful to the third parties with separate and similar applications for access to pleadings pending. Although the Court found the applications had met the formal requirements, it did not agree that the parties had shown a legal interest in the result of the action before the Court, which it defined as "a direct and present interest in the grant by the Court of the order or decision as sought by the party, whom the prospective intervener wishes to support and not an interest in relation to the pleas in law put forward".

Similarity between cases was not deemed a sufficient reason to allow an intervention.

UPC Case Management System updates

The UPC Registry team has announced a number of changes to the case management system (CMS) since the opening of the UPC. For example, in the final months of 2023, the UPC announced the CMS would allow downloading of multiple documents at once from a case and the possibility to self-correct representative's data, and also introduced the My Legal Team functionality. This allows multiple CMS users to have access to a single case under the responsibility of an authorised user. Whilst these changes and enhancements are welcomed, we hope to see more CMS improvements in the months to come as it remains an unclear and ambiguous system to navigate.