2024 Week 50
Does it matter who gets to the doors of the UPC first? Does it matter if you get there too early? The UPC Central Division Milan has been exploring these basic questions in Pfizer v Glaxo.
Patent granted and UPC actions started
It turns out to be important exactly when Glaxo got their European patent EP 4183412 B1 granted by the EPO. Article 97(3) EPC says that the decision to grant a European patent shall take effect on the date on which the mention of the grant is published in the European Patent Bulletin. This was 14 August 2024, but the communication giving that information was dated 18 July 2024.
Glaxo filed a UPC infringement action and Pfizer filed a UPC revocation action. Both sides filed preliminary objections against the other, in effect arguing about which UPC division should be in charge of deciding on validity of the patent.
When should you use a preliminary objection?
See the timeline of a typical UPC revocation action here. Within one month of service of an infringement action or a revocation action, the defendant can file a preliminary objection against some basic aspects of the case such as the jurisdiction of the UPC (e.g. that there is an opt-out) or the competence of the specific division chosen by the claimant. But if a defendant does not file a preliminary objection within the one month time limit, they are deemed to agree to the jurisdiction and competence of the UPC and the division chosen.
UPC revocation action filed …
A group of 8 Pfizer companies filed a revocation action at the UPC. They filed this at 9 seconds past midnight on 14 August 2024:
Because this is a standalone revocation action (not a counterclaim), the revocation action is sent to the UPC Central Division (Milan, in view of the life sciences subject matter of the case). Unless an action for infringement “has been brought” before a Local Division, in which case the revocation action must be brought before the same Local Division.
… but UPC infringement action already filed?
Glaxo filed an infringement action at the UPC Local Division Düsseldorf on 5 August 2024, against 14 Pfizer companies (6 of which were named in the revocation action). Pfizer filed a preliminary objection on 24 September 2024, arguing that the infringement action was filed before the patent was granted. Glaxo responded to the preliminary objection on 2 October 2024. But there is no sign of a decision or order from the Düsseldorf Local Division on that issue. To keep the plates spinning, Pfizer filed their defence to infringement and a counterclaim for revocation at the Düsseldorf Local Division on 14 November 2024.
Grounds for the preliminary objection
In the revocation action, Glaxo filed their own preliminary objection, arguing about the applicability of Article 33(3) and (4) of the UPC Agreement. Remember that at the UPC the grand bargain is that Local Divisions usually deal with infringement and Central Divisions usually deal with validity. But where infringement and validity are raised in parallel, what needs deciding is whether the Local Division should hear these issues together, or whether there should be bifurcation. Glaxo’s view was that there were pending infringement proceedings between the same parties at the Düsseldorf Local Division at the time that the revocation action was filed, so the Milan Central Division should not be competent to hear the revocation action.
Same parties?
There is partial overlap between the Pfizer companies in the revocation action and in the infringement action. But some companies are only named in one set of the proceedings. So the Milan Central Division decided that the parties in the two actions are not the “same parties”, taking a narrow approach to this issue and following Meril v Edwards and distinguishing from Seoul Viosys v Laser Components. The effect of this was that the court considered that the central revocation action could be considered admissible, at least for two of the Pfizer companies.
Can you file an infringement action early?
The more interesting question is whether, at least for the identical parties between the infringement action and the revocation action, the central revocation action is admissible. The answer to this question depends on whether the infringement action is admissible, and if so, when.
The view of the Milan Central Division is that the UPC does not have jurisdiction for an infringement action filed before the formal date of grant of the patent. Therefore, they decided that an early-filed infringement action cannot be used to challenge the forum used for a UPC revocation action filed later.
Based on the decision of the court, an infringement action filed before the date of grant is inadmissible as of the date it was filed. But can it become admissible later, due to the grant of the patent? In the words of the court, can it grow into admissibility? They declined to answer this question, saying that the answer would not affect their decision.
Glaxo argued that it was only relevant that the infringement action is admissible eventually. They based their argument on the first UPC preliminary injunction case 10x Genomics v NanoString. in which the PI application was filed on 1 June 2023 but the formal grant date of the patent was 7 June 2023. An even wider gap was seen in Alexion v Samsung Bioepis where the PI application was filed on 19 March 2024 but the patent was not formally granted until 1 May 2024. In both of these cases, the UPC considered the PI applications to be admissible, without really discussing it.
The Milan Central Division commented that these cases were for provisional measures (different to main proceedings) and also did not deal with issues of competence of different UPC divisions in view of parallel proceedings.
Equal treatment of infringement and revocation actions?
Fair enough, but we are still left with the question of whether an infringement action can be filed before the date of formal grant of a European patent. We are waiting to see the decision of the Düsseldorf Local Division on Pfizer’s preliminary objection. Because the patent proprietor clearly has the choice of where to file a UPC infringement action, the Local Division just has to decide whether an infringement action filed before the formal date of grant of the patent is admissible, either immediately, or once the patent is granted. The existence of the central revocation action should not affect that decision.
In view of the approach of the UPC to preliminary injunction cases, it seems at least possible that the Düsseldorf Local Division will decide that an early-filed infringement action can become admissible as of the date of grant of the patent. But that would open a can of worms. Because if that is the answer, should the same logic apply to revocation actions filed before the grant of the patent? And then how early is too early?
Seconds matter?
Maybe the answer instead is that you must wait until the patent is formally granted before filing infringement or revocation actions at the UPC. Or there will be some other bright line date, probably known to all of the parties, from which the UPC actions may be filed.
What this case shows is that where there is a material interest in having a particular division take charge of a case, you must get to the court door first. Where the parties are racing to be the first to file their case, seconds matter. So, while there is not really a 9 second rule at the UPC, it seems likely that there is a first-to-file precedence that can be measured down to the second. Check your internet connection!
