The Unified Patent Court (UPC) offers two options for challenging the validity of a patent: on the one hand, a Statement for Revocation of the patent (revocation action, Art. 32 (1) (d) Agreement on a Unified Patent Court – UPCA), Rule 42 et seq. Rules of Procedure of the Unified Patent Court – RoP) and, on the other hand, the Counterclaim for Revocation of the patent (Art. 32 (1) (e) UPCA, Rule 25 RoP), which can be used in the context of pending infringement proceedings as a reaction to the infringement action (statement of defense). The question therefore arises as to which of the two options is preferable or whether both actions can be brought in parallel.

Counterclaim for Revocation

In a counterclaim for revocation, the question of infringement and validity of the patent is dealt with by the same court (principle of unity). This makes it possible to hear and decide related actions together and thus avoid contradictory decisions. Furthermore, the counterclaim for revocation serves procedural economy, for example because evidence has to be collected once. In addition, the simultaneous conduct of infringement and validity proceedings in a counterclaim for revocation prevents the defendant from being convicted in the first instance on the basis of a patent that is not valid.

With regard to court costs, there are no significant differences between revocation actions and counterclaims for revocation. These amount to a fixed fee of EUR 20,000 for the former and a fixed fee of EUR 11,000 for the latter (as for the infringement action) in combination with a fee depending on the value in dispute, which, however, cannot exceed EUR 20,000 (Art. 36 (3) UPCA).^[1]

Competence of the division of the court if the parties are identical

The counterclaim for revocation is included in the statement of defense in the context of an infringement action and is therefore brought before the same local or regional division as the pending infringement proceedings (Art. 33 (3) UPCA, Rules 23, 25 UPC RoP). In this case, the local or regional division concerned may, after hearing the parties, decide at its own discretion on one of the following options: i) to proceed with both the action for infringement and with the counterclaim for revocation, ii) to refer the counterclaim for revocation for decision to the central division and suspend or proceed with the action for infringement, iii) with the agreement of the parties, to refer the case for decision to the central division (Art. 33 (3) (a), (b), (c) UPCA). A revocation action, on the other hand, must in principle be brought before the central division (Art. 33 (4) sentence 1 UPCA).

If the parties are identical, i.e. if the infringement and revocation actions are brought between the same parties in respect of the same patent, the court’s jurisdiction is determined by the order in which the respective actions are brought.

If a revocation action is already pending before the central division, the subsequent infringement action can be brought before any local or regional division as well as before the central division (Art. 33 (5) UPCA). If a counterclaim for revocation is brought in the infringement proceedings, the central division suspends all further proceedings on the revocation action until a decision has been taken by the local or regional division conducting the infringement proceedings, unless the parties have agreed otherwise (Rule 75 (3) RoP). The local or regional division responsible for the infringement action may proceed at its discretion in accordance with Art. 33 (3) UPCA and must take into account how far the proceedings on the revocation action before the central division had already progressed before the stay (Art. 33 (5) UPCA, Rule 75 (4) RoP).

However, if an infringement action is already pending before a local or regional division, a subsequent revocation action may only be brought before the same local or regional division (Art. 33 (4) sentence 2 UPCA). In this case, the same court has jurisdiction for the revocation action and the counterclaim for revocation if infringement proceedings are pending. These are therefore two parallel proceedings pending before the same division, which are, however, separate and independent of each other.

If the revocation action is brought before the competent local or regional division within the three-month time limit for filing a statement of defense in infringement proceedings (Rule 23 UPC RoP), it can in fact be treated as a counterclaim for revocation, especially since the two actions can also be combined due to their relatedness under Rule 340 RoP. If, on the other hand, the time limit for filing the statement of defense has already expired and the infringement proceedings are already well advanced, it is advisable to file a revocation action directly, as there is a high risk that the counterclaim for revocation will not be admitted by the court due to the late filing (Rule 263 (1) RoP).

Art. 33 (4) sentence 2 UPCA – in contrast to the counterclaim for revocation – does not provide for the possibility of referring the proceedings to the central division pursuant to Art. 33 (3) (b) or (c) UPCA. In this respect, the infringing defendant could opt for a revocation action before the local or regional division and thus avoid a referral to the central division pursuant to Art. 33 (3) (b) or (c) UPCA. This could have a positive effect on the course of the proceedings, as a joint hearing of validity and infringement is usually in the interest of the defendant.^[2]

Furthermore, the local or regional division is not obliged to call in a technical judge when bringing a separate revocation action pursuant to Art. 33 (4) sentence 2 UPCA. In contrast to Art. 33 (3) (a) UPCA for the hearing of a counterclaim for revocation, a technical judge is assigned here in accordance with Art. 8 (5) UPCA at the request of a party or on the court’s own initiative. Nevertheless, in practice, it will not be possible to dispense with the involvement of a technical judge even in revocation proceedings before a local or regional division in view of the technical matters that are usually dealt with in such proceedings.^[3]

Competence of the division of the court if the parties are not identical

If the parties in the infringement and revocation proceedings are not identical, for example if the infringement action is not brought by the patent proprietor – but by the licensee – or if the revocation action is brought by a subsidiary^[4], then Art. 33 (4) sentence 2 UPCA does not apply. This opens up the possibility of bringing a separate revocation action before the central division, even though an infringement action or counterclaim for revocation is already pending before the local or regional division.

This option may seem interesting for the time being, especially as it offers the possibility of attacking the validity of the patent before two different divisions and thus benefiting from the – possibly – different opinions / viewpoints of the different judges and presenting new prior art at a later date.

However, if the defendant deliberately chooses to bring a revocation action before the central division, certain risks must be taken into account. First of all, it must be noted that even in this case, the revocation and infringement proceedings can be combined with the consent of both divisions and after hearing the parties in accordance with Rule 340 RoP. According to Rule 340 RoP, in the interests of the proper administration of justice and of avoiding inconsistent decisions, where more than one action concerning the same patent (whether or not between the same parties) is pending before: (a) different panels (whether in the same or different divisions); or (b) different panels of the Court of Appeal,  the panels may by agreement, at any time, after hearing the parties, order that two or more actions shall, on account of the connection between them, be heard together. In this case, Art. 33 (3) UPCA must be observed, as the counterclaim for revocationa may already have been referred to the central division pursuant to Art. 33 (3) (b) UPCA. Furthermore, if both actions are not joined, the decision on the separate revocation action will normally come too late to influence the infringement proceedings. Furthermore, there is the possibility that the same technical judge participates in both divisions and thus no different opinion would be expected between the proceedings.

In summary, the decision on the preference for a revocation action or a counterclaim for revocation is not clear-cut and should in any case be weighed up individually between the given advantages and the possible risks. Furthermore, it should not be disregarded that, in view of the principle of unity, the local or regional divisions will rather endeavor to decide efficiently and without the delay of a referral. It is therefore to be expected that a referral to the central division will only be preferred in very complex cases, especially as it is unlikely that the local or regional divisions will consider themselves incapable of deciding on validity issues.

Author: Dr Olga Michala

E-mail: michala@paustian.de

[1] See the Table of Court Fees set by the Administrative Committee of the UPC

[2] Cf. Burrichter, Arwed: Nullity proceedings before the Unified Patent Court. In: Harmsen / Verhauwen (eds.): Festschrift for Thomas Kühnen, 1st edition 2024, p.155ff

[3] Cf. Burrichter, Arwed: Nullity proceedings before the Unified Patent Court. In: Harmsen / Verhauwen (eds.): Festschrift for Thomas Kühnen, 1st edition 2024, p.155ff

[4] See the decision of the Paris Central Division of November 13, 2023 UPC_CFI_255/2023

Provisional measures can be ordered by the Unified Patent Court (UPC) to prevent an imminent infringement of the patent or to prohibit the continuation of an alleged infringement. If necessary, the court can prohibit the continuation of the infringement under threat of penalty payments or make it subject to the provision of security in order to ensure that the right holder is compensated (Art. 62, para. 1 Agreement on a Unified Patent Court – UPCA).

Provisional measures are ordered by way of summary proceedings, which comprise written and oral proceedings, with both or one of the parties being heard (ex parte) (Rule 205 Rules of Procedure of the UPC).

Types of provisional measures

The Court may in particular order the following provisional measures:

(a) injunctions against a defendant

(b) the seizure or delivery up of the goods suspected of infringing a patent right so as to prevent their entry into or movement within the channels of commerce

(c) if an applicant demonstrates circumstances likely to endanger the recovery of damages, a precautionary seizure of the movable and immovable property of the defendant, including the blocking of his bank accounts and other assets

(d) an interim award of costs. (Rule 211, para. 1 a – c UPC Rules of Procedure, Art. 62, para. 1, 3 UPCA).

Application for provisional measures

The application for provisional measures can be filed by a party with the court both before and after the main proceedings have been instituted (Rule 206, para. 1 UPC Rules of Procedure). In addition to formal information such as the names and addresses for service of the parties, patent number, etc. (Rule 13, para. 1 UPC-RO), it must also include the following: (i) the indication of which provisional measure is requested, (ii) the reasons why the order of provisional measures is necessary to prevent an infringement, to prohibit its continuation or to make such continuation subject to the provision of security, (iii) the facts and evidence on the basis of which the order is requested and supporting its necessity, and (iv) a concise description of the action which will be started before the Court, including an indication of the facts and evidence which will be relied on in support of the main proceedings on the merits of the case (Rule 206, para. 2 a-e UPC Rules of Procedure).

The applicant must demonstrate that the patent in question is valid, that he is entitled to initiate proceedings under Art. 47 UPCA, that he is the right holder and that his right is being infringed or threatened with infringement (Rule 211, para. 2 UPC Rules of Procedure). He must therefore prove that his right under his valid patent is being infringed and that its protection is necessary by ordering provisional measures. In order to be able to satisfy itself with sufficient certainty that the above-mentioned requirements are met, the court can oblige the applicant to submit all available evidence (Art. 62, para. 4 UPCA, Rule 211, para. 2 UPC Rules of Procedure). According to the Court of Appeal of the Unified Patent Court, such a sufficient degree of certainty requires that the court considers it at least more likely than not that the applicant is entitled to initiate proceedings and that the patent is infringed. A sufficient degree of certainty is lacking if the court considers it on the balance of probabilities to be more likely than not that the patent is not valid.^[1]

The burden of presentation and proof for these facts, from which the entitlement to initiate proceedings and the infringement or threatened infringement of the patent are to arise, as well as for all other circumstances which are to support the petitioner’s request, lies with the petitioner, just as in the main proceedings (Art. 54 UPCA). On the other hand, the burden of presentation and proof for facts relating to the lack of validity of the patent and other circumstances supporting the defendant’s position lies with the defendant, unless the subject of the decision is the ordering of measures without hearing the defendant.

In addition, the applicant can request that provisional measures are ordered without hearing the other party. In this case, the application must also contain the reasons for not hearing the defendant and any information on previous inter-party correspondence in this regard (Rule 206, para. 3 a-b UPC Rules of Procedure). If the applicant applies for provisional measures to be ordered without hearing the defendant, he undertakes to disclose all material facts known to him that could influence the court’s decision to make an order without hearing the defendant (Rule 206, para. 4 UPC Rules of Procedure). The defendant can protect himself against an ex parte order by filing a protective letter (Rule 207 EPG-VerfO). If such a document is filed, the court must in particular consider summoning the parties to an oral hearing (Rule 209, para. 2 d of the Rules of Procedure).^[2]

Decision of the court

The date for the oral hearing, in inter partes proceedings, shall be set by the court as soon as possible after receipt of the application for provisional measures (Rule 210, para. 1 UPC Rules of Procedure). If the applicant fails to attend the hearing without reasonable cause, the application for provisional measures will be rejected (Rule 210, para. 3 UPC Rules of Procedure).

Before or during the oral hearing, the court may request the parties to submit any information, documents and evidence that will enable it to reach a decision (Rule 210, para. 2 UPC Rules of Procedure). In reaching its decision, the court has the discretion to weigh the interests of the parties against each other and, in particular, to take into account the potential harm that could arise for one of the parties from the granting or rejection of the application (Art. 62, para. 2 UPCA, Rule 211, para. 3 UPC Rules of Procedure). In addition, the court will consider unreasonable delay in applying for provisional measures (Rule 211, para. 4 UPC Rules of Procedure).

The decision to order provisional measures is issued in writing as soon as possible after the conclusion of the oral proceedings. It must contain an indication that an appeal may be lodged in accordance with Article 73 UPCA and Rule 220, paragraph 1, UPC Rules of Procedure (Rule 210, paragraph 4 and 211, paragraph 6, UPC Rules of Procedure). At the discretion of the court, the decision may be pronounced before it is recorded at the end of the oral proceedings (Rule 210, para. 4 UPC Rules of Procedure).

In addition, the court may order provisional measures without hearing the defendant (ex parte order). This can be done in particular if a delay would probably cause irreparable harm to the applicant or if there is a demonstrable risk that evidence will be destroyed (Rule 212, para. 1 UPC Rules of Procedure and Art. 60 para. 5 UPCA). In this case, the respondent is informed of the provisional measures without delay, but at the latest immediately at the time of execution of the measures, and can subsequently request a review in this regard (Rule 212, para. 2, 3 and Art. 60, para. 6 UPCA). This review can be requested within 30 days of the execution of the measures and leads to an oral hearing in which the court can amend, revoke or confirm the order (Rule 197, para. 3, 4 UPCA).

In addition, if the order has been made without hearing the defendant, the court may make the enforcement of the provisional measures subject to the provision of security by the applicant in order to ensure that the defendant is not disadvantaged by the enforcement (Rule 211, para. 5 UPC Rules of Procedure and Art. 60, para. 7, 9 UPCA).

Revocation of provisional measures

The applicant must initiate proceedings on the merits before the court within a period of 31 calendar days or 20 working days, whichever is the longer, otherwise the court will ensure that the provisional measures are revoked or otherwise set aside at the request of the defendant (Rule 213, para. 1 UPCA and Art. 60, para. 8 UPCA). This is without prejudice to any claims for damages that the respondent may be able to assert. The time limit starts from the date specified in the court’s order.

Furthermore, if the provisional measures are cancelled or lapse or if it is subsequently established that the patent has not been infringed, the defendant may request compensation for all damages incurred as a result of the measures ordered (Rule 213, para. 2 UPC Rules of Procedure and Art. 60, para. 9 UPCA).

Provisional measures in practice

From the start of the court’s activities on 1 June 2023 until the end of October 2024, the Court of First Instance received a total of 41 applications for provisional measures.^[3]  Most of the applications were submitted to the Munich local division, which, with a total of 17 applications, is the local division with the largest workload. This could lead to delays in decisions on provisional measures, as happened recently in the case of Tiroler Rohre and SSAB Swedish Steel, in which the court took five months.

The parties can be represented in court at the UPC by both attorneys and patent attorneys (Art. 48 (1), (2) UPCA). European patent attorneys who are authorised to act as professional representatives before the European Patent Office in accordance with Art. 134 of the European Patent Convention (EPC) and who have the necessary qualifications (certificate for conducting European patent litigation proceedings or similar additional training) can fully represent the parties at the UPC. This option appears to be increasingly being utilised by the parties.

Author: Dr Olga Michala

E-mail: michala@paustian.de

^[1] See the order of the Unified Patent Court issued on 26/02/2024, UPC_CoA_335/2023 – NanoString. / .10xGenomics II

^[2] You can find more information on the protective letter in our article ¨The protective letter at the Unified Patent Court¨.

^[3] See the court’s monthly report on its workload at: https://www.unified-patent-court.org/sites/default/files/upc_documents/Case%20load%20of%20the%20Court_end%20October.pdf

With the ratification of the Agreement on a Unified Patent Court (UPCA) and the subsequent start of work of the Unified Patent Court (UPC) on 1 June 2023, it has become possible to challenge the legal validity of a patent in the context of pending infringement proceedings in the form of a counterclaim for revocation. The counterclaim for revocation is therefore often used as a response to an infringement action (defence). If, as a result, the patent is successfully declared invalid, the legal basis of the infringement action is withdrawn.

In the course of the court’s first year of operation, i.e. in the period between 1 June 2023 and 31 May 2024, a total of 165 counterclaims for revocation were filed, whereby these were filed in the context of 63 infringement actions. The number of counterclaims for revocation filed appears high in comparison to the pending infringement actions because, until recently, each defendant in infringement proceedings was supposed to file a separate counterclaim for revocation.

Counterclaim for revocation as a defence and grounds for invalidity

The defendant in infringement proceedings may respond by filing a statement of defence within three months of service of the statement of claim (Rule 23 Rules of Procedure of the Unified Patent Court). If the defendant is of the opinion that the allegedly infringed patent is invalid, the statement of defence must contain a counterclaim for revocation of the patent against the proprietor of the patent (Rule 25 (1)). Since the court will decide on the validity of the patent on the basis of the counterclaim for revocation (Art. 65 para. 1 UPCA), it must contain one or more grounds for invalidity. The grounds for invalidity are exhaustively listed in Art. 138 of the European Patent Convention (EPC). Accordingly, a patent can only be declared invalid if its subject matter is not patentable, if it does not disclose the invention clearly and completely enough for a person skilled in the art to carry it out, if its subject matter goes beyond the content of the application or if its scope of protection has been impermissibly extended and if its proprietor is not authorised to do so (Art. 38 para. 1 EPC). Accordingly, the court may declare a patent invalid in whole or in part solely on the above grounds (Art. 65 para. 2 EPC).  In this case, the rights conferred by the granted patent are deemed not to have been granted from the outset. (Art. 65 (4) UPCA).

Jurisdiction of the Unified Patent Court (UPC)

According to Art. 32 UPCA, the court has jurisdiction for both infringement actions and actions for revocation or counterclaims for revocation of patents. As a result, the question of infringement and the legal validity of a patent at the UPC is dealt with by the same court.

With regard to the jurisdiction of the chambers of the Court of First Instance in the case of a counterclaim for revocation, the relevant local or regional chamber before which the infringement action is pending may, after hearing the parties, decide at its own discretion in favour of one of the following options: i) to hear both the infringement action and the counterclaim for revocation, ii) to refer the counterclaim for revocation to the central chamber and to stay or continue the infringement proceedings, iii) to refer the case to the central chamber with the consent of the parties (Art. 33(3)(a), (b), (c) UPCA).

A counterclaim for revocation may be filed in addition to an action for a declaration of invalidity already pending before the central division (Article 33(5) UPCA, Rule 75). In this case, the division designated by the central division to hear the action for a declaration of invalidity suspends all further proceedings on the action for a declaration of invalidity until a decision is taken by the division conducting the proceedings on the infringement action pursuant to Article 33(3) UPCA, unless the parties have agreed otherwise (Rule 75(3)).

In addition to the possibilities of an action for a declaration of invalidity and a counterclaim for revocation, the legal validity of a granted European patent can also be challenged by means of an even more cost-effective opposition procedure, but only within nine months of publication of the grant (Art. 99 EPC).

Author: Dr. Olga Michala

E-mail: michala@paustian.de