Author: Anna Giedke
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IP Insights: Are UPC injunctions subject to proportionality considerations?
▶️ Watch our latest #IP Insights, in which our attorneys-at-law Dr. Anna Giedke and Dr. Tobias Wuttke share our first-hand experience at the UPC. What has previously been a global discussion has now reached the Unified Patent Court. ❓ Is there a disproportionality defense? These are the points to consider: The UPC member states are…
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Untangling the UPC: What in-house patent experts need to know now
JUVE PATENT and BARDEHLE PAGENBERG invited in-house IP counsel and expert guests from selected tech firms to an informal in-house IP networking event. The Unified Patent Court opened for business on 1 June; 20 days in, we wanted to reflect on this historic milestone and explore what the future will bring. The first few months of…
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LD Mannheim, June 3, 2025, Order, UPC_CFI_365/2023
Pre-emptive enforcement warning rejected: Applications for advance warnings of penalties for non-compliance are likely to be rejected if the court has already exercised discretion on enforcement. The claimant’s request for a warning of daily penalties was denied, as the court had already decided not to set such terms in the main proceedings. Time period for…
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LD Helsinki, February 11, 2025, procedural order regarding changes in a case, UPC_CFI_214/2013
The main issues to be considered when addressing the admissibility of changes in a case are that the nature of the frontloaded procedure of the UPC must be protected and that during the process there are no such changes that the defendant’s right to defence is compromised.: If these two premises are protected there is…
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LD Milan, February 7, 2025, procedural order, UPC_CFI_472/2024
The position of the party attacking the patent shall be protected to the same extent as that of the party defending the patent.: If the mandatory coordination between the appeals proceedings before the EPO and the proceedings before the UPC may be achieved in the most efficient way by extending the time limits for filing…
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Court of Appeal, February 11, 2025, Appeal of a Panel Review Order regarding right to represent, UPC_CoA_563/2024, APL_53716/2024
Representation of parties in proceedings before the UPC, Art. 48 UPCA: No corporate representative of a legal person or any other natural person who has extensive administrative and financial powers within the legal person, whether as a result of holding a high-level management or administrative position or holding a significant amount of shares in the…
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CD Munich, October 22, 2024, public access to the register, UPC_CFI_1/2023, UPC_CFI_14/2023
Rule 262.1(b) RoP does not provide a legal basis for making available documents that are not written pleadings or evidence.: The general principle laid down in the UPCA is that the register is public and the proceedings are open to the public, unless the balance of interests involved is such that they are to be…
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LD Mannheim, October 20, 2024, request for production of evidence, UPC_CFI_471/2023
Request for production of evidence, Art. 49 UCA, R. 190 RoP, must be based on specific facts: As a general rule, an order to produce evidence (e.g. source codes) presupposes that a fact is relevant to substantiate claims or objections. For this purpose, the applicant must state in detail which specific fact he wishes to…
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LD Mannheim, October 20, 2024, order on request for information, UPC_CFI_471/2023
Key Takeaways Two alternatives for requests for information: The Court may order that information which is in the possession of the other or a third party is communicated. Rule 191 of the Rules of Procedure provides for two alternatives for respective requests for information. The purpose of the first alternative of Rule 191 RoP is…
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LD Paris, 24 July 2024, Procedural order of the Court of First Instance, UPC_CFI_440/2023
Pendency of an action: The pendency of an action is determined by the date of the registration with the Division concerned – in other words, the pendency of an action is independent on whether or not the defendant has already accepted service of the statement of a claim. Same parties according to Art. 33 (4)…
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Central Division, Paris Seat, 19 July 2024, Decision of the Court of First Instance, UPC_CFI_255/2023
Concurrent pendency of invalidity proceedings before different divisions and criteria for exercising the Court’s discretion, Art. 33 (3) UPCA: In the situation of concurrently pending invalidity attacks by different parties against the same patent before different divisions (here: revocation action before CD and counterclaim(s) for revocation before LD) the local division has a discretion either…
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CD Munich, 23 July, 2023, Order on conclusion of a revocation action by way of settlement, UPC 75/2023, UPC 80/2023
Conclusion of an action by way of settlement without a request according to R. 365.1 RoP possible: The parties may at any time conclude their action by way of settlement which “shall” be confirmed by a decision of the Court, Art. 79 UPCA. R. 365 RoP clarifies that the Court shall confirm the settlement only…
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Court of Appeal, July 23, 2024, order on appeal, UPC_CoA_177/2024
Application for preservation of evidence or inspection of premises implies a request to disclose the report on the outcome: The legitimate purpose of the procedure for the preservation of evidence or the inspection of premises (Art. 60 UPCA, R. 192 et seq.) includes the use of the evidence to decide whether to initiate proceedings on…
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LD The Hague, 4 March 2024, Order on confidentiality regarding financial information, UPC_CFI_239/2023
Limitation to “attorneys eyes only” possible under R. 262A RoP on protection of confidential information: Claimants applied for a confidentiality order (R. 262A RoP) regarding financial information which did not relate to the main action but to Defendant’s request for security for costs (R. 158 RoP). The LD The Hague decided that access to confidential…
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LD Duesseldorf, 26 February 2024, procedural order on language of proceedings, UPC_CoA_335/2023
Applications on change of language require substantiated reasons: The Applicant requested for a change of language from German into English (Art. 49(5) UPCA, R. 322 RoP). It argued that both parties were English speaking companies, that it was an SME and translation costs would be disproportionately disadvantageous for it. Also, this would enable the CoA…
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CoA Luxembourg, 26 February 2024, procedural order on application to stay, UPC_CoA_3352023
No stay of proceedings if party was declared insolvent after the oral hearing had concluded and the legal dispute was ready for a decision, R. 311.1 RoP, Art. 41 (3) UPCA: A court shall stay the proceedings if a party is declared insolvent, R.311.1. However, the Rules must be interpreted in accordance with Art. 41(3)…
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CD Munich, 27 February 2024, order to combine cases in revocation actions, UPC_CFI_1/2023, UPC_CFI_14/2023
Counterclaim for revocation can be combined with central revocation action against the same patent upon request by the parties: The parties agreed that the counterclaim for revocation pending at LD Munich should be dealt with together with an earlier filed and considerably further advanced central revocation action pending at the CD. The LD Munich thus…