Things to watch as the UPC goes live

The commencement of the UPC is right around the corner – the new system goes live on 1 June 2023.

Before launch we take a look at some of the key factors which may determine how the first few weeks and months play out.

Opt-Outs

We understand that over 100,000 opt-outs of European patents have been registered. This is a lot but the expectation was for there to have been many more by now. One explanation for this is the UPC’s recent statement that its Case Management System is “under considerable pressure” due to the increased filings of opt-outs. We trust that the UPC is working tirelessly to resolve these issues and expect an update imminently. We very much hope that the issues are resolved shortly to ensure certainty for patent proprietors who do not wish to be subject to the UPC’s jurisdiction from 1 June 2023.

Central Division

It has long been known that the UPC would need to replace London as the location of one of the sections of the UPC’s central division. It was announced on 16 May 2023 that Munich and Paris will now, provisionally, take this role jointly, with allocations of cases as follows:

• Paris: IPC Section A patents (“human necessities” which includes for example, medical devices, tobacco products and foodstuffs)
• Munich: IPC Section C patents (“chemistry” (including pure and applied chemistry, certain marginal industries and operations or treatments) and “metallurgy”)

Interestingly, therefore, despite previous expectations that Milan might represent the third central division location (in addition to Paris and Munich), politically this has not proved to be possible, for now.

Language of proceedings

There appears to be a strong sense that English will be used in the majority of cases. At a recent AIPPI Webinar UPC judges thought that it may be considered the most neutral option for parties as it is not currently the home language of any current UPC contracting member state, at least until Ireland’s ratification.

This practice is likely to be considered favourable to a number of the current users of the European patent systems and courts, most notably those outside Europe.

The UPC’s approach

There is plenty of scope for the discretion of the UPC to be exercised, for example on issues concerning provisional measures, production of documents and evidence. In this respect we will be monitoring how consistency is achieved between individual local or regional divisions and consequently the extent to which “forum shopping” will become desirable. The extent to which the Court of Appeal will seek to control local variations in practice will also be interesting.

From Day 1: Our top three things to watch

In the opening months of the UPC there will likely be a lot to look out for and analyse. Here are our top three things to watch:

1. Preliminary injunctions and other provisional measures: How prolific will they be? How quickly can they be obtained? How will the body of law surrounding preliminary injunctions develop?
2. Opt-outs and jurisdictional challenges: Will the Court become embroiled in opt-out or jurisdictional challenges? To what degree will the Court of First Instance be able to send issues to the Court of the Appeal and the CJEU to ensure continued and smooth operation in the local, regional and central divisions?
3. Law: There remain questions concerning the extent to which the UPC will rely on each of its sources of law (being (1) Union law, (2) the UPC Agreement; (3) the EPC; (4) other international agreements applicable to patents and binding on all the contracting member states; and (5) national law). For issues such as infringement the law is not currently harmonised across UPC contracting member states, and so as things stand it may not be possible to harmonise decisions across those states. We expect that will change over time, and that may require the CJEU’s involvement. Will we in the meantime see instances where the Court is prepared to grant relief in respect of infringement in one UPC contracting member state, but not another?