The Unified Patent Court (UPC) is still in its early days, but as engagement continues to increase across a wide range of technical fields it is critical to have a knowledgeable and versatile team of Representatives to navigate the evolving legal system.
In the UPC, parties must be represented by lawyers authorised to practise before a court of a contracting Member State, or European Patent Attorneys (EPAs) who have an appropriate qualification such as a European Patent Litigation Certificate. The vast majority of registered UPC Representatives are EPAs based in Germany or the UK. There are several reasons why UK and German EPAs are well placed to handle litigation matters, be it validity and/or infringement, before the UPC:
1. Experience in contentious EPO proceedings
UPC litigation is frequently compared to EPO opposition and appeal proceedings; both are front-loaded and involve extensive technical and legal written submissions followed by a short, typically one-day, oral hearing. The legal framework of the UPC gives significant weight to the European Patent Convention (EPC), which is applied in EPO proceedings, over other national laws.
2. Prior knowledge of the patent
Revocation actions before the UPC involve tight timings, with defendants having only two months from service to file a defence. Making use of EPAs who have been involved in the drafting, prosecution and/or opposition of the European patent in suit can be highly beneficial to quickly get to grips with the technical and legal issues at hand.
3. Technical expertise
All EPAs hold at least a first degree in a science, technology, engineering or mathematics (STEM) subject, with many also having a Master’s, PhD or industry experience. This technical expertise is critical to understand and explain complex and innovative subject matter. In addition, it may be utilised in the cross-examination of expert witnesses (permitted by the UPC Rules of Procedure and recently used in Abbott v Dexcom before the Nordic-Baltic Regional Division).
4. Effective management of parallel proceedings
In addition to conducting EPO oppositions and appeals, UK and German patent attorneys have rights of representation before the national courts. UK patent attorneys are entitled to act as advocates before the UK patent courts for both infringement and validity actions. German patent attorneys can represent clients in nullity actions before the German Federal Patent Court or, together with an attorney-at-law, in infringement actions before the District Courts. This enables efficient and co-ordinated parallel proceedings before the EPO, UPC and/or national courts. German and UK EPAs can provide valuable strategic advice on bringing an action in the most effective forum, whether at the UPC, national patent courts or both.
5. Language of proceedings
Revocation actions must be brought in the language of the European patent, ~75% of which are granted in English and ~19% German. For infringement actions, the language of proceedings is determined by the UPC Division where the case is brought. All Divisions permit actions to be brought in English, and already in practice English is becoming the default language used in UPC proceedings.
UK and German EPAs are at the core of Boult’s team of over 50 UPC Representatives spanning a comprehensive range of technologies. We have an enviable track record before the EPO Opposition Divisions and Boards of Appeal, as well as experience in the UK, German and UPC patent courts.
However, we do not limit our clients to using a single in-house team. Instead, we maintain flexibility by working with lawyers across Europe, where needed, to best suit the specific requirements of each case. Depending on the UPC Division and the legal issues at hand, co-counsel can be selected to advise on local practice and procedure, and to provide insight on the likely panel of judges. More generally, lawyers can assist in matters such as preliminary injunction applications and settlement negotiations. We build bespoke teams with our clients to align with their broader legal and business objectives.
It is important to remember that the UPC is a rapidly developing system, and everyone involved is building experience. However, Boult has been active before the UPC from its earliest stages, securing critical wins for multinational clients in collaboration with international litigation teams.
If your business is considering bringing or defending an action before the UPC, contact one of Boult’s UPC Representatives – we are here to help you succeed.
- Article 24 UPC agreement
- UPC_CFI_430/2023
- Unitary Patent Dashboard
