Summary of the UPC month
In January, the Court of First Instance received 65 new cases, the lion’s share of which being applications for cost decisions, bringing the total to 700 cases. At this rate, we will be celebrating the 1000th case in mid-2025.
The UPC’s monthly statistics now also include an overview of each Division’s “market share”, with
- the LD Munich clearly leading at 27,8%
- followed by LD Düsseldorf (16,2%),
- and CD Paris (13,8%).
Turning to types of cases, there seems to have been a first in January 2025 with the LD Lisbon receiving an application for an order to freeze assets.
At the Court of Appeals, the total number of appeals under R. 220 (1) lit. a) or b) increased by 55%.
The UPC also provided very valuable technical advice on the CMS in one of its press releases in January. In order not to let the Defendant know about a request for an ex parte order on provisional measures, the respective application should not be filed as a related proceeding to an already pending main action.
Key decisions in a nutshell
The key decisions of the month are dealing with:
(1) Realistic starting points in the state of the art for assessing inventive step
The first step in assessing inventive step is to pick (a) realistic starting point(s) in the state of the art. According to the CD Paris, generally speaking, these are points which would be of interest for the person skilled in the art seeking to develop a similar product or process at the priority date of the patent in suit. The CD further exemplarily specifies such realistic starting points as documents which
(a) disclose the same main relevant features or
(b) address the same or similar underlying problem.
(2) The strict prerequisites for a narrow interpretation of terms used in the claim
The LD Düsseldorf is dealing with broadness in two regards in a recent decision: that of the UPC’s (long arm) jurisdiction (here: for the UK) as well as that of terms used in the claim. With respect to long arm the Court held that if the defendant was domiciled in a Contracting Member State (here: Germany), the Unified Patent Court had jurisdiction to hear the infringement action in respect of the UK part of the patent in suit. Regarding claim construction, assuming the broadest technically sensible meaning is the rule. The description and drawings cannot limit this meaning per se and therefore, a claim construction “below the wording” (“Auslegung unterhalb des Wortlauts” in German) is generally impermissible. Only in case of convincing reasons (based on the circumstances of the individual case) a narrowing interpretation is possible.
(3) The necessity of provisional measures considering the reaction to pre-litigation warnings
The relevance of pre-litigation behavior is pointed out by the LD Munich. Provisional measures are to be considered (highly) necessary if the alleged infringer reacted dismissive to a pre-litigation warning and so his behavior did not suggest that he will refrain from further acts of infringement.
Remarks
The UPC keeps up its momentum and this is certainly due to the outcome of the first instance decisions on the merits which have been published in the last 7 months. It is fair to state that the UPC’s Central Division is generally speaking not a “patent graveyard” and that the UPC’s Local Divisions are balanced and provide reasonable success chances for claimants.
