Good service at the UPC: service of claims
In order to initiate a legal action within the Unified Patent Court (UPC), a statement of claim must be served on the defendant. Effective service is extremely important for many reasons: various deadlines in the UPC are calculated from the date of service. For example, during an infringement action the defendant is entitled to lodge a statement of defence, the deadline being three months from service of the statement of claim.
We provide here a short guide to help you navigate through any potential pitfalls regarding service of claims. If you have any questions or are considering initiating a legal action within the UPC, please contact your usual D Young & Co representative for further information.
Overview of Requirements
The requirements for service are detailed in Rules 270 to 279 of the Rules of Procedure of the Unified Patent Court (RoP).
The rules pertaining to service are written such that for (1) service in a contracting member state of the law of the European Union (EU) and, (2) service outside of the European Union, service should be attempted by specific modes in the first instance, with back-up modes of service available.
The rules of service form a hierarchical series of modes of service that, according to the majority of available case law, must be attempted in their given order. Where none of these modes of service are possible, the rules of service provide for further alternative modes of service as an ultimate back up.
Service in a contracting member state of the law of the EU
Where the defendant is in a contracting member state, the means of service should be attempted in the order below, in accordance with Rules 270-272:
- Service by electronic means to the electronic address of the defendant or defendant’s representative.
- Where service by electronic means cannot be effected, any other method foreseen by the law of the EU [Regulation (EU) 2020/1784], such as by registered letter, may be used.
- Where service cannot be effected by a method foreseen by EU law, service may be effected by any method permitted by the law of the member state of the EU where service is to be effected or authorised.
For service to a company or legal person, service must be provided to its statutory seat, central administration or principal place of business within the contracting member states, or at any place within the contracting member states where the company or legal person has a permanent or temporary place of business.
For service to an individual, service must be provided to the individual’s usual or last known residence within the contracting member states.
Furthermore, written pleadings shall be served by the Registry on the other party by methods indicated in the rules. For service to be deemed effective, written pleadings must be served by the Registry, as was found in Alexion v Amgen
(UPC_CoA_405/2024; ORD_44709/2024). Here, it was held that prior communications between the parties themselves via another electronic system like the German special electronic lawyer’s mailbox (besonderes elektronisches Anwaltspostfach, beA) cannot be considered as effective service under Rule 278.1 RoP.
Service outside the contracting member states
Where the defendant is not in a contracting member state, the means of service should be attempted according to the below, in accordance with Rules 273-274:
- Service in accordance with EU law [Regulation (EU) 2020/1784] where applicable, or service in accordance with the Hague Service Convention or any other applicable convention where it applies.
- Where no such convention or agreement is in force, service through diplomatic or consular channels.
- Lastly, service may be permitted via alternative means (see below).
It should be noted that where a statement of claim is to be served on multiple parties, extra care should be taken to serve via the appropriate route.
In Nera Innovations v Xiaomi (UPC_CoA_205/2024) it was confirmed that a defendant company in China cannot, as a starting point, be served a statement of claim via a related company within the same group located within a contracting member state. The Chinese Xiaomi companies had registered offices outside the territory of the contracting member states and did not have their statutory office, central administration or principal place of business or their own permanent or temporary establishment in a contracting member state.
Furthermore, care should be taken when serving in China or Hong Kong, as detailed in NEC v TCL (UPC_CoA_69/2024 & UPC_CoA_70/2024). Although the Hague Convention applies, China is opposed to the possibility of postal service, requires a translation in Chinese of all documents to be served, and only allows service by electronic means, such as via email, with the consent of the recipient. It was also held that service cannot be made by public service in the form of a written notice to be displayed in the publicly accessible premises of a UPC Local Division.
Therefore, attempts to serve in China should be by a method provided for in the Hague Service Convention and taking into account national requirements.
Service by an alternative method
Where service in accordance with the above cannot be effected, a backup option is provided with Rule 275.1 RoP, which stipulates that where there is a good reason, the court may authorise service by a method or at a place not otherwise permitted.
It has been confirmed in the recent case law that said alternative means of service may only be permitted following an earlier attempt at service in accordance with Rules 270-274 RoP.
In NEC v TCL (UPC_CoA_69/2024 & UPC_CoA_70/2024) the Mannheim Local Division held that Rule 275.2 is an exceptional provision that can only be relied upon if service has first been attempted in accordance with Rules 270-274 RoP, following which alternative means of service are attempted in accordance with Rule 275.1 RoP.
Where alternative means fail under Rule 275.1 RoP, Rule 275.2 RoP may then be applied.
In some circumstances, as in air up group v Guangzhou Aiyun Yanwu Technology (UPC_CFI_508/2023 & UPC_CFI_509/2023), previous failed attempts at service may be deemed good service. In this case, service in accordance with the Hague Service Convention could not be effected. Service documents were posted to the competent authority in China, but after a number of attempts to chase the status of service, the Chinese authority provided no information. The court found that service under Rule 274 RoP must be regarded as impossible, and thus an alternative attempt of service under Rule 275.1 RoP must be made where factually and legally possible.
The applicant and court had unsuccessfully attempted alternative means of service through both formal and informal channels. There was no other known method or location of service.
Thus, it was held that, given the attempted service by the standard means of the Hague Service Convention and service by alternative means was not possible, Rule 275.2 RoP allows for the court to order that said steps taken to bring the statement of claim to the attention of the defendant may be deemed good service.
Why establishing effective service can be crucial
Air up group v Guangzhou Aiyun Yanwu Technology (UPC_CFI_508/2023, UPC_CFI_509/2023) demonstrates the importance in establishing effective service.
As discussed, because the correct channels had been followed (that is, attempted via the Hague Service Convention and subsequently attempted by alternative means), service was deemed effective.
Consequently, it was held that service of the decision by default should also be deemed effective. In particular, where it has not been possible to serve the application for a provisional measure in accordance with Rule 274 and there is no indication that the decision by default issued subsequently can also be served in accordance with Rule 274, it is not necessary to undergo a new service attempt under Rule 274 for serving the decision by default.
With no alternative means of service existing, the publication of the decision by default on the court’s website also constituted good service pursuant to Rule 275.2 RoP.
Thus, despite a lack of reply from the defendant, service was deemed effective and a decision by default issued.
Evidently, despite the importance of establishing an effective date of service, service of a statement of claim can be a complex procedure.
Case details at a glance
Decision level: Court of Appeal, Luxembourg
Case: UPC_CoA_405/2024 (ORD_44709/2024)
Parties: Alexion v Amgen
Date: 08 August 2024
Decision: dycip.com/upc-coa-405-2024
Decision level: Court of Appeal, Luxembourg
Case: UPC_CoA_205/2024 (ORD_34253/2024)
Parties: Nera v Xiaomi
Date: 06 August 2024
Decision: dycip.com/upc-coa-205-2024
Decision level: Court of Appeal, Luxembourg
Cases: UPC_CoA_69/2024 & UPC_CoA_70/2024
Parties: NEC v TCL
Date: 29 July 2024
Decisions: dycip.com/upc-coa-69-2024 & dycip.com/upc-coa-70-2024
Decision level: Munich Local Division
Cases: UPC_CFI_508/2023 (ORD_68822/2024) & UPC_CFI_509/2023 (ORD_68821/2024)
Parties: air up group v Guangzhou Aiyun Yanwu Technology
Date: 21 January 2025
Decisions: dycip.com/ord-68822-2024 & dycip.com/ord-68821-2024
