2024 Week 23
It’s a bit risky to write a blog where you hope it will go out of date quickly. But right now seems a good time to take stock and draw a breath. Here we summarise the most important substantive UPC news topics that you haven’t missed – because they haven’t happened yet.
One of the stated aims embedded in the Rules of Procedure of the UPC is to hold a trial (the “oral hearing”) on the merits of a patent case within about a year of the start of proceedings. So, with about a year having passed since the start of the UPC, we are now seeing plenty of trials taking place. Unlike at the EPO, the court’s decision is not announced at the end of the hearing, but delivered in writing several weeks later. We can expect lots of news to start landing within the next couple of months on issues of infringement and validity.
Over the last year, the main action at the UPC has been all about procedure and provisional measures. In terms of procedure, the main topics under discussion have been the language of proceedings, public access to documents in the court file, service and jurisdiction, and stays in view of pending EPO oppositions. With respect to provisional measures, the UPC has set out some detail on saisie orders and in particular on preliminary injunctions, including the weight given by the court to the summary assessment of substantive issues of infringement and validity.
So which aspects of UPC substantive patent law and practice do we know that we don’t yet know? We can helpfully split these into three – infringement, validity and evidence, and maybe make educated guesses about the direction of travel.
Infringement
The UPC Court of Appeal has explained the basics for determining the scope of protection. But because this has only been in the context of preliminary injunctions, there are some major issues of UPC practice still to be decided.
Will there be a UPC doctrine of equivalents? Best guess: yes, there must be. The Protocol on the Interpretation of EPC Article 69 effectively says so. But what form will it take? Will there be corresponding limits based on validity, such as a Formstein defence?
Will the file wrapper be used when determining the scope of protection? The UPC Court of Appeal ostentatiously swerved this issue in VusionGroup vs. Hanshow. Routine use of the file wrapper seems unlikely, but where the patent proprietor has made clear statements about the scope of the claims in support of arguments relating to the validity of those claims, it is certainly possible that these will be used in UPC proceedings.
Validity
Here there is really one overarching question: will the UPC stick closely to EPO practice and case law on patent validity? Given its adversarial nature, it is inevitable that one side or the other will deploy helpful EPO case law to try to support its case and so the UPC is going to have to say clearly whether or not this line of case law is at least the starting point for the further development of UPC jurisprudence.
In various preliminary injunction cases, we have seen the UPC address substantive questions of novelty, but there have not been difficult issues raised so far.
The European IP profession is watching the UPC carefully to see how it will consider inventive step. Based on decisions taken so far in preliminary injunction cases, our best guess might be expressed as a “problem and solution approach with UPC characteristics”. Given the relative lack of emphasis that may be given to expert evidence (see below), the problem and solution approach is a widely understood way to assess inventive step based mainly on documentary prior art evidence. But given the importance of inventive step in most patent cases in which validity is in issue, we can expect the UPC Court of Appeal to gradually impose a uniform approach to inventive step.
How will the UPC approach difficult questions relating to priority, such as priority entitlement and partial priority? These issues have been broadly settled by the EPO Enlarged Board of Appeal, and the best guess here is that the UPC will follow a similar approach.
A more controversial question is whether the UPC will follow the EPO’s approach to added subject matter objections. Over the years, the EPO has become ever more strict on this issue. Some hope that the UPC will take a more holistic and practical approach than the EPO. The UPC has shown that it is open to receiving claim amendments in the form of auxiliary requests, and so the UPC is likely to be adjudicating on claim amendments not considered by the EPO.
There are many further issues not yet considered at the UPC, such as exclusions from patentability (patent eligibility), methods of medical treatment, sufficiency of disclosure and more. They will all have their time in the sun in due course.
Evidence
At the heart of all patent cases is the evidence. As in most court systems, the general rule is that a party asserting a fact must be prepared to prove that fact.
There is no general obligation at the UPC for discovery. In particular, there is no requirement for each side to disclose to the other side all evidence in its control that is material to the case.
However, the UPC Rules of Procedure provide mechanisms for accessing evidence. One of these is an order for preserving evidence (saisie order) which, bailiff and all, has been put to use in a couple of UPC cases. This is a potentially powerful tool, but its scope at the UPC has not yet been fully explored. Another, more polite, approach is to request that the court orders the other side to produce specific evidence. This was demonstrated recently in an order from the UPC Local Division in Hamburg in Avago vs. Tesla. From the cases to date, it is clear that fishing expeditions will not be permitted – the court requires the nature of the evidence sought to be closely specified.
How will the UPC approach expert evidence? Although there is scope in the UPC Rules of Procedure for there to be a court appointed expert and/or for the parties to produce their own experts, it is not clear how much influence such expert evidence will have on the court proceedings. It is notable that in all substantive validity cases, the panel of judges for the case will include at least one technically qualified judge. Whether this means that the courts will be less inclined to require expert evidence remains to be seen.
The coming months
It’s an exciting time to have a number of cases coming to the boil at the UPC. We will have a series of first instance decisions to pore over and then corresponding appeals in due course. We will keep you up to date as we move these Unknowns into the Known column.
