The UPC: three months in

The UPC went “live” on 1 June 2023. After a flurry of activity on day one (with 19 cases reportedly having been filed), there has since been a trickle of further infringement and revocation actions. It is too early to start seeing noteworthy trends among decisions (as there has only been one substantive decision to date (as to which see below)), however there are a number of well-reported recent developments.

Key developments

• Actions by Europe-based companies are dominating the court’s infringement actions, with a large contingent of small- and medium-sized European businesses being represented among the UPC’s early filers. Tech and Medtech feature predominantly.
• The UPC has appointed a further 21 technically qualified judges – nine of whom are German (many being judges at the German Federal Patent Court). The total number of technically qualified judges is now 68.
• Some of the  hearings on substantive issues, which will consider whether to grant preliminary injunctions, will be held at the Munich local division this month.

The timing battle in Sanofi v Amgen

Many readers will be aware that one of the highest value cases running before the UPC is between Amgen and Sanofi. The UPC has heard its first substantive preliminary objection in this case. It was brought by the patentee, Amgen, and related primarily to its allegation that Sanofi had filed its action for revocation in the incorrect location.

Sanofi commenced a revocation action against Amgen in the UPC Central Division on Day 1 of the UPC. An important fact is that this was filed in hard copy at the Registry in Luxembourg (reportedly at 11:26) because of issues with the UPC’s Case Management System (CMS) at the time. Amgen filed an infringement action against Sanofi in relation to the same patent on the same day at the sub-registry of the Munich Local Division (reportedly, this was filed at 11:45).

Article 33(4) of the UPCA states: that if “an action for infringement … between the same parties relating to the same patent has been brought before a local or a regional division, [certain actions, including revocation actions] may only be brought before the same local or regional division.” Therefore if Sanofi’s revocation action had been brought before Amgen’s infringement action it was legitimate for Sanofi’s claim to have been brought in the Central Division. If not, then that action should have been brought in the Munich Local Division and it would stand as inadmissible.

There were two key issues:

1. Whether the relevant time for lodging an action is considered to be the time when the documents are lodged, or whether some other time is relevant e.g. when the action appears on the official register.
2. Whether Sanofi had been right to file its action at the Registry in Luxembourg in hard copy (remembering that it was not possible to file electronically at that time).

The second issue came about from a potential inconsistency between the Rules of Procedure (allowing for filing of hard copy documents at the Registry in Luxembourg, or sub-registry, when the UPC CMS is down) and the Rules governing the UPC Registry (allowing for hard copies of documents to be submitted during opening hours of the competent division of the Court of First Instance or of the Court of Appeal)

In relation to timing (issue 1), it was held that the clearest solution was to assess which case was actually lodged first – in this case it was Sanofi, whose filing had preceded Amgen’s by 19 minutes.

On issue 2, the UPC ultimately agreed with Sanofi (who raised numerous arguments such as: (i) the Rules of Procedure should be construed broadly; (ii) the Central Division should as a matter of policy have jurisdiction over revocation actions; (iii) the Rules of the Registry do not apply to claim commencement documents; and (iv) no “competent division” existed at the start of a claim because that would not have been established when filing the Statement of Claim).

Amgen’s preliminary objection was rejected. Although it means one of the first cases will involve bifurcated sets of infringement and revocation proceedings, it appears to represent a decision reached with close attention to the intention of the rules, pragmatism and, seemingly, fairness (perhaps giving a slight nod to the common law principles which help to underpin the UPC).