Summary of the UPC month
The UPC keeps its promises: with the first decisions on the merits coming hot off the press in July, the Court shows that it really is capable of handling first-instance proceedings within about one year.
This performance is impressive in light of the fact that most UPC judges still only have part-time assignments.
- Of the 170 infringement actions now pending, exactly 50% were answered with a counterclaim for revocation (until now).
- As applications for provisional measures seemed to be stagnating from May to June, they saw an 18% increase in July. One of these applications went to Lisbon and one to the newly opened CD Milan.
- Thus, Ljubljana is the only Local Division left where no case is pending for the time being.
Key decisions in a nutshell
The key decisions of the month are dealing with:
(1) The problem-solution approach before the UPC
The CD Paris holds, that the “problem-solution approach” – although in fact being the standard at the EPO – is not mandatory under the EPC, thus giving the UPC the freedom to apply a different standard. However, in the given case, the outcome did not differ irrespective of the applicable test.
(2) Prior use rights
As clearly stated in Art. 28 UPCA, rights based on prior use established in one Contracting Member State do only extend to this respective State. Therefore, the LD Paris considers it necessary to prove prior use with regard to each Contracting Member State the patent in suit is asserted for.
(3) Conflicts of jurisdiction in relation to national Courts
Regarding a national nullity action (by a different party) that was already pending before the beginning of the transitional period under Art. 83 UPCA, in the opinion of the LD Paris (deviating from the CD Paris), Art. 29 et seq. Brussels Ibis Regulation are directly applicable. However, the LD Paris did not use its discretion to either stay its proceedings or decline jurisdiction under Art. 30 Brussels Ibis Regulation.
Remarks
The international patent community was anxiously awaiting the outcomes of the first infringement and revocation (= nullity) actions on the merits. The result is as expected: a mixed bag. Currently, it is simply too early to identify trends – but, in a few months from now, this will change.
