[The IPKat] Fordham 33 (Report 6): Unified Patent Court

[Annsley Merelle Ward]

The AmeriKat getting into the spirit
of the proceedings

The IPKat was back in Fordham, with the Spring skies and the chirping birds gracing the streets of the Upper West Side. As a proud and long-standing partner with the Fordham IP Conference, now in its 33rd year, the IPKat is thrilled to partner with the students of Fordham for reports from this years’ conference. The room was crowded with IP lawyers, judges, policymakers, and commentators at Fordham Law School, where Fordham University’s 33rd Annual Intellectual Property Law and Policy Conference rounded off its third and final day with an engaging mid-morning panel on The Unified Patent Court Panel: Jurisdiction, Remedies, and the Future of European Patent Enforcement. Robert Moke (a second-year J.D. student at Fordham Law School), reports on the Friday morning session.

Over to Robert:

Wolrad Prinz zu Waldeck und Pyrmont chaired the panel, introducing speakers Miquel Montañá of Clifford Chance, Barcelona; Rachel Mumby of Bristows, London; John Pregram of Fish & Richardson P.C., New York; Judge Rian Kalden of the Unified Patent Court, Court of Appeal, Luxembourg; Ari Laakkonen of Powell Gilbert, London; and John Richards of Ladas & Perry LLP.

Wolrad Prinz zu Waldeck und Pyrmont began the panel by noting that European patent litigation is increasingly conducted in the Unified Patent Court (UPC), while national courts in Europe are seeing a declining share of patent cases. Miquel Montañá added that adoption of the UPC as a litigation forum has been uneven across industries, with medical device companies moving more quickly to embrace it, while pharmaceutical clients remain more hesitant.

The panelists first discussed the UPC’s benefits. Wolrad commented that litigants view the UPC as an attractive forum because it offers injunctions that are enforceable across all UPC Member States. Rachel Mumby added that litigants in the UPC benefit from a quick turnaround time for receiving a judgment. The UPC’s “front-loaded procedure” streamlines the pleadings stage by requiring parties to issue full submissions and broad disclosures, while oral hearings before the UPC are typically limited to one or two days. Rachel also observed the UPC’s front-loaded procedure may have drawbacks for smaller companies who may experience increased pressure due to the court’s shorter filing deadlines and for cases involving patents that cover complex technologies for similar reasons, though Miquel countered that front-loaded litigation is already commonplace in countries such as Spain. John Pregram added that another drawback to UPC litigation particular to the pharmaceutical sector is that its quick judgments may undermine a company’s ability to prolong market exclusivity by delaying an adverse judgment.

The panel also discussed UPC jurisdiction. Judge Rian Kalden explained that under BSH Hausgeräte v Electrolux, the UPC applies the EU jurisdictional framework, the Brussels I-bis Regulation, for disputes involving defendants or territorial elements within EU Member States, while disputes outside the EU are governed by local jurisdictional law rules, rather than the EU’s harmonized framework. She added that the UPC is currently assessing whether Article 8 can serve as a jurisdictional anchor to allow the UPC to establish jurisdiction over co-infringers where that defendant merely acts as an intermediary. Ari Laakkonen predicted that BSH v. Electrolux will create a “fertile ground” for jurisdictional questions in future cases before the UPC concerning patent validity. He questioned whether the UPC’s inter partes determinations risk undermining principles of judicial non-interference or whether they give rise to res judicata effects.

The panel’s next topic was preliminary injunctions (PI) in the UPC. Ari and Rian noted that the key difference between the UPC and United States standard for granting a PI is that the UPC’s standard for granting PIs relies heavily on urgency, rather than applying a rigid irreparable harm requirement. Ari discussed the relevance of Boehringer Ingelheim v Zentiva to the UPC’s assessment of urgency, noting that the court does not treat marketing authorization alone as sufficient to establish imminent infringement. Instead, the Court requires objective evidence of near-term market entry, beyond mere regulatory approval, to support a finding of urgency.

The panel concluded by discussing the future of European patent practice in the UPC. John Richards explained that the UPC Agreement provides European patentees with a seven-year transitional period during which they can opt out of the UPC and predicted that this opt-out period will not be extended. He encouraged European patent practitioners to gain experience before the UPC opt-out period expires."

Do you want to reuse the IPKat content? Please refer to our 'Policies' section. If you have any queries or requests for permission, please get in touch with the IPKat team.