The challenging timeline of patent infringement proceedings before the Unified Patent Court

The new Unified Patent Court (UPC) will handle patent infringement proceedings according to a new and unique set of rules as defined by the UPC Agreement (UPCA) and the Rules of Procedure (RoP). These proceedings will expectedly have a faster pace than most national patent infringement proceedings in Europe. The parties will face challenging deadlines, especially the defendant in technically complex cases.

This article provides an overview of patent infringement proceedings before the UPC and their timeline. While this article focusses on regular infringement proceedings on the merits, our previous article discusses preliminary injunctions before the UPC.

Asserting one patent for multiple member states

The UPC allows asserting one patent with effect in the whole territory of participating EU member states. The geographic scope of damages claims and interim measures can even go beyond the territory of UPC member states and include claims regarding non-UPC but EP member states under the “long-arm” rule of Art. 71b Brussels Ibis Regulation.

Forum shopping between the various divisions of the UPC’s Court of First Instance is possible to a certain degree: Pursuant to Art. 33 UPCA the plaintiff of an infringement action can choose between the Local/Regional Division where the infringement occurs or where one of the defendants has its residence or place of business (respectively the Central Division if the defendant’s residence is outside UPC territory). If both parties agree they can freely choose a division (Art. 33 (7) UPCA).

An infringement action may request a permanent injunction (Art. 63 UPCA), corrective measures such as recall and destruction (Art. 64 UPCA), an order to render account (Art. 67 UPC; also against third parties) and/or damages (Art. 68 UPCA).

Besides the patent proprietor, also the exclusive licensee has the standing to bring infringement actions if he informs the proprietor accordingly (Art. 47(2) UPCA).

Course of UPC patent infringement proceedings

The infringement proceedings on the merits before the Court of First Instance consist of the written procedure, the interim procedure, and the oral procedure (Art. 52(1) UPCA).



The written procedure is initiated by the Statement of claim, followed by a Statement of defence, a Reply and a Rejoinder; further written pleadings can be allowed. If the Statement of defence includes a Counterclaim for revocation against the patent in suit, the Reply includes a Defence to the Counterclaim and can also include an application to amend the patent. A Reply and a Rejoinder regarding the Counterclaim for revocation can follow.

The Statement of claim is a typical front-loaded brief that shall, inter alia, contain the grounds, including an indication of the facts and evidence relied on as well as the name and address of the parties, details of the patent concerned, competence and jurisdiction of the division, the nature of the claim, and an indication of the value of the infringement action (Rule 13.1 RoP).

If the Statement of claim is formally in order, it is registered, assigned to a chamber and served on the defendant (Rule 17 RoP). Then, the judge-rapporteur is appointed and his/her name is communicated to the parties (Rule 18 RoP). If the defendant is of the opinion that - despite examination by the Registry - the action is subject to formal deficiencies, they can object to these within one month after service by means of a so-called "Preliminary objection" (Rule 19 RoP).

The defendant must lodge a Statement of defence within three months of service of the Statement of claim (Rule 23 RoP). The Statement of defence must contain, inter alia, information on the grounds for dismissal of the action, together with the relevant evidence, and a statement regarding the value of the infringement action (Rule 24 RoP). The defendant can lodge a Counterclaim for revocation against the patent in suit together with the Statement of defence (Rule 25 RoP). In this case, the counterclaim must be accompanied by the grounds for revocation supported by arguments of law and explanation of the proposed claim construction, indication of facts, evidence, witness statements, and (prior art) documents (Rule 25 RoP) and fees must be paid (Rule 26 RoP).

After service of the Statement of defence and after consulting the parties, the judge-rapporteur will set a date for an interim conference (where appropriate) as well as a date for the oral hearing and (if necessary) one alternative date (Rule 28 RoP).

Within two months of service of the Statement of defence the claimant must lodge a Reply to the Statement of defence together with (if applicable) a Defence to the Counterclaim for revocation (Rule 29, 29A RoP). This Defence can include an application by the proprietor to amend the patent (Rule 30.1 RoP). Any later request to amend the patent is admitted into the proceedings only if permitted by the Court (Rule 30.2 RoP). This might be the case for amendments requested as a mere reaction to arguments brought by the Defendant at a later stage.

The interim procedure serves case management. The judge-rapporteur gives directions to the parties in preparation of the oral hearing and has the discretion to hold one or more interim conferences. The interim procedure should be completed within three months of the closure of the written procedure (Rule 101 RoP). In the interim procedure, the panel decides

• whether to proceed with both the action for infringement and with the counterclaim for revocation and to call in a technically qualified judge (Art. 33(3)(a) UPCA, Rule 37.3 RoP);
• whether to separate the counterclaim and refer it to the Central Division (Art. 33(3)(b) UPCA, Rule 37.4 RoP; which may be accompanied by a stay of the infringement proceedings); or
• whether - with the consent of the parties – to refer the entire proceedings to the Central Division (Art. 33(3)(c) UPCA, Rule 41 RoP).
  
  

The Court has discretion to stay the infringement proceedings in several different scenarios (cf. Rule 195 RoP), inter alia if a revocation claim is pending before another division (e.g., an earlier revocation action or a referred counterclaim revocation action) or in case of pending opposition (appeal) proceedings before the EPO.

In the interim procedure, the judge-rapporteur can also give certain further procedural orders, for example on questions of evidence, the hearing of experts and witnesses, and on the amount in dispute (Rule 103 RoP et seq.). Any party and the judge-rapporteur can request to allocate a technically qualified judge to the panel (Rules 33, 34 RoP).

Where appropriate, the interim procedure includes an interim conference held by telephone or video conference and is held in Court only on request by a party (Rule 101 RoP). The interim conference can be held in any language agreed by the parties’ representatives. Following the interim conference, an order setting out the decisions taken will be issued (Rule 105 RoP).

The oral procedure will start immediately after the interim procedure is closed. The presiding judge shall, in consultation with the judge-rapporteur, take over the management of the action (Rule 110 RoP). The Court will give its decision after the closure of the oral hearing and shall endeavor to provide its reasons within six weeks of the oral hearing (Rules 118.6, 118.7 RoP), although in exceptional cases deviations from this rule can be made (e.g., Rule 114 RoP).

Because the amount of damages may depend on the information and accounts rendered by the defendant, the Rules of Procedure allow two approaches for the determination of damages: Either, after a decision on the merits and rendering account, the court specifies a time period to lay open the books and continues with the procedure for the award of requested damages afterwards (Rule 144 RoP) or the plaintiff requests determination of damages in separate proceedings no later than one year from service of the final decision on the merits on both infringement and validity (Rule 125 RoP et seq.). Damages are calculated taking into account all appropriate aspects, especially lost profits, infringer’s profit as well as non-economic factors such as moral prejudice (Art. 68 (3) lit a UPCA).

An appeal against a decision of the Court of First Instance may be brought before the Court of Appeal. Furthermore, the UPC will request preliminary ruling by the Court of Justice of the European Union for questions underlying EU law.

Speedy schedule is challenging, particularly for the defendant

The UPC’s key promise is the possibility to obtain one judgement in a single expeditious court proceeding, which is then enforceable in a multitude of jurisdictions. The UPC is expected to live up to this promise, making it an interesting litigation strategy particularly if enforcement is desired in many European countries.

To realize this expeditious proceeding, the UPCA and the RoP provide the above-mentioned short deadlines. In particular the three months deadline for the Statement of defence and Counterclaim for revocation (including the search for prior art) will be challenging for the defendant, especially if surprised by the Statement of claim. Also, the plaintiff’s Reply brief and the “final” claim amendment within further three months is challenging. Therefore, both sides of patent infringement proceedings before the UPC are advised to prepare arguments before an imminent suit where possible.