A strategic approach to UPC litigation
03 April 2017
With the advent of the Unified Patent Court, it is essential that it forms part of any litigation strategy.
While some users are likely to want to see how the UPC settles down in the early stages, there are others who may see strategic value in commencing proceedings in the UPC, potentially in parallel with existing or proposed national proceedings against the same defendant. In particular, the use of this additional forum, coupled with the threat of a pan-European injunction may serve to focus the minds of those sitting around the licensing negotiation table. We discuss a few of the practical and tactical considerations below.
It is essential to be aware that proceedings in the UPC are front loaded, meaning that an initial statement of case must set out a party's case in detail, and include evidence relied on, amongst other things. Therefore, preparation for early proceedings in the UPC will need to begin well before the system commences.
If you think you may wish to launch infringement proceedings early, perhaps to preclude a pre-emptive declaratory action in a national court, there are several steps to take.
Most importantly of course is to collect evidence of infringement, including where this takes place, and to prepare the arguments, facts and evidence relied on.
In doing this, consideration should be given to choice of division at the UPC. The jurisdictional rules (see below) cover which division or divisions can be chosen for a case, and where there is a choice there will be tactical considerations. These will include language and national approaches (local divisions will approach things with a "national flavour" in the early days of the court). Choice of division in this respect will depend on what remedy or remedies you may wish, including interim remedies, and possibly national approaches to legal issues.
Jurisdictional rules for UPC infringement actions
Actions for infringement should be brought before the Local or Regional Division in either
a) The contracting member state in which the infringement occurred; or
b) The contracting member state where the defendant (or one of them, if multiple defendants) has its residence or principal place of business or, in the absence of either of these, its place of business.
An action for infringement can be brought in the Central Division where either:
c) The defendant has its residence, principal place of business or, in the absence of either of these, its place of business outside the territory of the contracting member states; or
d) The contracting member state concerned (for the purposes of (a) or (b) above) does not have a Local Division or participate in a Regional Division.
An action against multiple defendants can be brought only where the defendants have a commercial relationship and the case relates to the same infringement.
Counterclaims for revocation or a declaration of non-infringement must be brought before the same division as the infringement action to which they relate.
As can be seen from the above, the jurisdiction rules provide the potential for choice of UPC division in many infringement cases, in particular where there may be multi-country infringement and/or multi-defendant litigation.
There will certainly be some users who want to commence invalidity proceedings in the UPC early, to achieve an early and comprehensive clearance across the relevant European market. It is likely that well advised patentees will be aware of this risk and seek to opt out patents that may be subject to such proceedings but careful monitoring of opt-outs at the UPC Registry, and identifying potential mistakes in those opt-outs, could mean that opportunities arise to challenge patents before an effective opt-out has been registered.
Protection from interim injunctions
Where a party is concerned about the risk of an interim injunction being sought against them in the UPC, there is the possibility to file a protective letter at the UPC Registry. This should ensure that any application for an interim injunction is notified to the party concerned, and avoid the possibility of any injunction being granted without notice or the opportunity to be heard. Users may wish to consider preparing protective letters in advance of the commencement of the UPC.
The jurisdiction and procedural arrangements in the UPC are relatively complex with a number of subtleties. Our UPC experts will be happy to advise in detail on request and assist with any UPC preparations you may wish to make.