Maximizing UPC litigation success – key takeaways from Marks & Clerk

With the Unified Patent Court (UPC) now well into its second year of operation, our experienced litigators are gaining valuable insights into how to navigate this new European patent litigation landscape. A recent webinar hosted by Marks & Clerk brought together partners actively involved in UPC cases to share first-hand experiences and strategic guidance for maximizing litigation success. Here are the key takeaways from the session.

The UPC - a rapidly evolving international court

The UPC is an international patent litigation forum covering 18 participating EU countries, offering a streamlined process for enforcing and challenging patents. Cases are heard in various divisions, with the Court of First Instances spreading across regional and local divisions, while appeals are handled in Luxembourg. As the Court matures, its case law is rapidly expanding, with over 800 decisions issued to date, primarily on procedural matters, while substantive decisions are increasingly now also being issued.

One defining feature of the UPC is its multinational panel composition. Each panel includes judges from different jurisdictions, bringing diverse legal traditions into play. While this may lead to initial inconsistencies, it is expected that a harmonized approach will develop over time.

Procedural considerations - speed and efficiency

One of the UPC’s distinguishing features is its fast-paced litigation process. Standard cases aim to reach a final hearing within 12 months, though backlogs in high-traffic divisions such as Munich and Düsseldorf mean actual timelines may extend to 17 months or longer. Appeals add an additional 9-12 months.

Given the speed of proceedings, written submissions are heavily front-loaded. Parties must submit all key arguments and evidence early, with little room for late-stage additions. Extensions are rarely granted, making preparation critical.

Key procedural matters include:

• Electronic Case Management System (CMS): All filings are submitted digitally, though the platform has usability challenges. Local registries and indeed judges will often communicate informally by email, such as when confirming availability for hearings. 
• Language of proceedings: While initially dominated by German, over 50% of cases are now conducted in English, albeit flavoured by the consideration that English is not the first language of most of the judges. 
• Interim conferences: Typically held online, these help narrow key issues before final hearings.
• Oral Hearings: Generally conducted in person, with some remote participation possible.

Strategic use of parallel proceedings

A crucial consideration in UPC litigation is the interplay between UPC revocation actions and European Patent Office (EPO) oppositions. Both forums provide mechanisms for challenging patent validity, but they operate differently:

• Speed: UPC revocation decisions are typically issued within 14 months, while EPO oppositions take 19+months on average (excluding a 9-month post-grant filing window) but acceleration of EPO oppositions is possible if there is parallel litigation.
• Cost: UPC litigation is more expensive but allows for cost recovery for successful parties, unlike EPO proceedings where each party bears its own costs.
• Technical complexity: The EPO’s opposition divisions and technical boards of appeal typically have more specialized technical expertise and so expert testimony and cross-examination may be more useful/impactful at the UPC. 
• Territorial coverage: A successful UPC revocation action will only result in revocation of the patent in the contracting member states of the UPCA – currently 18. Further national revocation proceedings, such as in the UK, should also be considered. EPO oppositions cover all designated countries of the patent.

For patent challengers, a dual strategy of filing both an EPO opposition and a UPC revocation action can maximize the chances of success. Given the UPC’s rapid timelines, early preparation - including monitoring pending patent applications and assembling litigation teams - is essential.

Preliminary injunctions and protective measures

The UPC has demonstrated a willingness to grant preliminary injunctions (PIs), particularly in jurisdictions such as Germany. Key considerations include:

• Speed: PIs can be issued ex parte (without the defendant present) within days. 
• Necessity: Courts require justification for urgency, though the bar is relatively low.
• Timeliness: Patentees must act swiftly, typically within 1–2 months of discovering infringement. 
• Protective letters: Potential defendants can file these pre-emptively to present arguments against ex parte PIs.

Key trends and developments in UPC case law

As case law evolves, several notable trends are emerging:

• Inventive step: Some UPC panels follow the EPO’s problem-solution approach, while others incorporate national methodologies. 
• Long arm jurisdiction: A recent decision in Fujifilm v. Kodak suggests the UPC may assert jurisdiction over non-member states for infringement matters. 
• Doctrine of equivalents: The UPC has confirmed its applicability, though different national approaches are influencing outcomes. 
• SEP litigation: Standard Essential Patent (SEP) cases are being actively litigated, with courts showing a willingness to grant injunctions under certain conditions.

Preparation is key

As the UPC landscape continues to evolve, proactive preparation is the key to litigation success. Companies should:

• Monitor patents that could impact their business and be prepared for sudden opt-out withdrawals. 
• Consider early filing of protective letters to mitigate the risk of ex parte PIs. 
• Assemble experienced litigation teams capable of navigating the court’s international dynamics and fast-paced procedures. 
• Align UPC, national litigation and EPO strategies to maximize validity challenges and enforcement opportunities.

Marks & Clerk’s team remains at the forefront of UPC litigation, providing ongoing analysis and updates. Subscribe here to learn more.