Since we published our last UPC update, the Court has remained busy issuing a number of procedural and substantive decisions.
Having ratified the UPC Agreement earlier this year, Romania has, from 1 September 2024, become the 18th Contracting Member State. Any Unitary Patent granted on or after 1 September 2024 will extend to Romania (but not for those Unitary Patents granted before that date). This leaves Czechia, Cyprus, Greece, Hungary, Ireland and Slovakia as the six remaining participating EU Member States yet to ratify the UPC Agreement. We continue to await news on Ireland's ratification following the postponement of the planned constitutional referendum earlier this year. As noted further below, the position in relation to jurisdiction over Ireland has been the subject of a particularly interesting Court of Appeal decision.
At the practical level, the UPC has entered into a cooperation agreement with the European Patent Office on IT related matters, which it is hoped will lead to an improved case management system for the Court, expected to be operational by mid-2025.
Latest statistics
On 30 August 2024, the UPC issued its most recent caseload update which continues to demonstrate healthy numbers of cases before the Court. As at that date, there had been 476 cases brought before the UPC, including 181 infringement actions and 43 standalone revocation actions (as well as 204 counterclaims for revocation).
The Munich Local Division continues to lead the way with 69 infringement actions, with the Paris Central Division still receiving the bulk of revocation actions (36). After opening its doors on 27 June 2024, the Milan Central Division has now received two actions. Most Divisions have now received a case, except for Ljubljana. Some 54% of cases before the Court have adopted English as the language of proceedings, with 41% adopting German (and 2% each for French and Italian).
Meanwhile, the Unitary patent dashboard indicates that, as at 6 September 2024, 17643 Unitary Patents had been registered. Siemens now leads the way as applicant for Unitary Patents, closely followed by Johnson & Johnson.
Court of Appeal: UPC jurisdiction does not extend to Ireland
Abbott Diabetes Care Inc v Sibio Technology Ltd, UPC_COA_388/2024
As noted above, whilst Ireland has signed the UPC Agreement, it is yet to ratify. In June 2024, the Hague Local Division granted Abbott Diabetes Care Inc. an injunction against Sibio Technology Limited that extended to the UPC member states in which the European patent was in force (Germany, France and the Netherlands), and also to Ireland.
Whilst Sibio did not contest the competence of the Hague Local Division with respect to Ireland, it subsequently appealed, requesting that the order be set aside and that Abbott's request for provisional measures be rejected. Sibio also requested that the appeal have suspensive effect, or alternatively, it have suspensive effect to the extent that the application for provisional measures was granted for Ireland.
Under Art. 47(1) of the UPC Agreement, an appeal has no suspensive effect unless the Court of Appeal decides that the circumstances of the case justify an exception to the principle. The Court noted that this could be where the appealed order is manifestly erroneous, or if the enforcement of the appealed order or decision would make the appeal devoid of purpose.
In this case, the Court of Appeal found that the decision of the Hague Local Division extending the preliminary injunction order to cover Ireland was "manifestly erroneous". Only countries that have both signed and ratified the UPC Agreement are 'Contracting Member States'. The Hague Local Division had therefore ordered more than was requested by Abbott – the order was therefore suspended in relation to Ireland (albeit the issue could be considered further on the substantive hearing of the appeal).
Transparency and access to pleadings
We have reported a number of times on the approach to requests by non-parties for access to pleadings. In Ocado v Autostore, in April 2024, the Court of Appeal set out principles that should be considered when dealing with such a request. It noted that the public's general interest in having access to pleadings/evidence usually arises once a case has concluded, but did also recognise that having access to such documents whilst a case is ongoing may be appropriate where the applicant has a "direct legitimate interest" in the subject matter of the proceedings.
It has recently been reported that the Munich Central Division has granted access to documents in proceedings between Astellas and Healios, Riken and Osaka University (the proceedings had concluded), where the request for access had been stayed pending the Court of Appeal's decision.
Confidentiality
We have also considered confidentiality of documents in UPC proceedings previously. In 10x Genomics v Curio Bioscience, the Court noted that, whilst there is normally no reason to limit the access of representatives to a certain number, the number of persons having access to the confidential information should not be greater than is necessary to ensure that the rights of the parties to an effective remedy and fair trial are respected. Accordingly, the number of representatives granted access should not be "unlimited" or "indeterminable".
Security for costs
We discussed in our report of the UPC's first year various issues relating to security for costs applications. Security for costs can be granted at the Court's discretion where there is a concern over enforcing a court order in a particular jurisdiction or an insolvency risk.
In Ballinno v UEFA, the Hamburg Local Division had ordered security where Ballinno had failed to provide any evidence as to its financial position and appeared to have no assets other than its patent. Ballinno has appealed both the order re security, and the order to grant provisional measures, and the Defendants have sought security also for their costs of the appeal. The Court of Appeal agreed that the provisions relating to security for costs apply to both first instance and appeal proceedings.
Meanwhile, the Nordic-Baltic Regional Division has refused an application for security in Edwards v Meril where the argument for security was based on the Claimant being located in the US. This fact, and that the UPC lacks experience so far of enforcing orders in the US, was not in itself sufficient to order security for costs.
Timing and stays
We also reported in our first year report on the issue of concurrent opposition proceedings before the EPO, and actions before the UPC. A stay during the written procedure at the UPC may be granted where a "rapid" decision of the EPO may be expected. Given that UPC proceedings are expected to be completed within a year, it will only be in rare cases that a stay is likely to be ordered, even where there is a high likelihood that the relevant claims will be held invalid by the EPO. For example, in Edwards v Meril, the Nordic-Baltic Regional Division identified that, given that the EPO proceedings had commenced in March 2024, and there was a likelihood of an appeal, it was "obvious" that a final decision of the EPO could not be expected rapidly.
Meanwhile in further proceedings between Edwards v Meril, the proceedings had been stayed in January 2024 pending the written decision of the EPO Board of Appeal (which had now been delivered with the case remitted to the EPO Opposition Division with the order to maintain the patent in amended form). In considering the resumption of the UPC proceedings, the Court noted that it had a wide discretion – it required the Claimant to bring a new action with clarified circumstances and the Defendant to submit a new defence. However, given the parties were already familiar with the dispute, it was not practical to follow the steps and timeline of the written procedure in full and so shorter time limits were imposed.
Provisional injunction on mushroom strain
In Amycel LLC v Szymon Spyra, the Hague Local Division granted Amycel's request for an injunction to prevent the Defendant from selling mushrooms in The Netherlands, Germany, France and Italy.
Amycel sells a mushroom known as 'Heirloom' – the number one selling mushroom in the world – which is protected by a patent. The patent is also in force in non-UPC Contracting Member States, including Poland. The Defendant is a polish farmer who has been selling 'Cayene' mushrooms in Poland since 2017. When Amycel's offers to try and reach a settlement with the Defendant failed, it initiated proceedings in Poland in 2023. These proceedings are still pending.
Amycel claimed it became aware of sales of Cayene in the UPC territory in late July 2023, which it sent for genetic testing. The Defendant argued that a provisional injunction should not be granted due to Amycel's delay in requesting the provisional injunction, but the Court accepted that the lengthy genetic testing had caused the delay. Amycel's knowledge of the Defendant's activities in Poland over a longer period were not relevant because Poland is not a UPC Contracting Member State.
The Court also rejected the Defendant's argument that the patent contravenes Article 53(b) EPC, which excludes from patentability "plant or animal varieties". The Court noted that fungi are neither plants nor animals, but were a separate taxonomic kingdom.