Summary of the UPC month
Happy New Year! 2025 is undoubtedly going to be the year of UPC decisions on the merits, as its 2nd birthday approaches.
- While the LD Lisbon received its first ever infringement case in December 2024,
- the LD Milan saw an 85% increase in infringement actions
- so that the LD Milan is now at eyes’ level with the LD Paris when it comes to total case numbers.
It is also noteworthy that the CD Milan now handles basically the same number of central revocation actions as the CD Munich, which underlines its importance.
Overall,
- 50 new cases found their way to the UPC’s Court of First Instance in December,
- bringing the total to 635 cases since its inception.
For the first time,
- German fell below the 40% mark as the language of proceedings and
- English is now leading with a share of 53%.
It is fair to assume that this trend will continue even though approximately 77% of all infringement actions are still filed before the German Local Divisions.
Key decisions in a nutshell
The key decisions of the month are dealing with:
(1) The explicit addition of Romania to pending claims
If an action was initiated before the entry into force of the UPCA in a new Member State (in this case Romania), it cannot in principle be assumed that this new Member State should already be included (especially if the Member States are listed). However, corresponding amendments to the claims covering this new Member States are allowed at least if both parties agree.
(2) The correction of inaccuracies in patent claims
Against the background of the necessary legal certainty for third parties, the Court of Appeal holds that inaccuracies in patent claims, especially linguistic errors or spelling mistakes, can only be corrected by way of interpretation in cases where
(a) the existence of the error itself and
(b) the precise way to correct this error are sufficiently certain to the average skilled person.
Common general knowledge may be taken into account in this regard. The Court of appeal further emphasized that the applicant’s assertions during the grant proceedings, and in particular the TBA’s endorsement thereof, can be seen as an indication of the view of the person skilled in the art at the filing date.
(3) The limits for new arguments after the statement of claim
Even if a new argument provided after the statement of claim does not constitute an amendment of a case (R. 263 RoP), R. 13 RoP in connection with the final sentence of Recital 7 of the Preamble still imposes some restrictions regarding its admissibility. The Court of First Instance has discretion to deem the new argument inadmissible depending on the circumstances of the individual case, considering the reasons for the late filing and also the opposing party’s opportunities to respond. A respective request by one party is not necessary. The Court can wait with its assessment until the final decision, balancing interests through a respective cost decision.
Remarks
December 2024 confirms three trends:
(1) the UPC continues to attract new cases on a continues level, whereby a rise of 20 new infringement actions in one month is the biggest increases since its inception.
(2) Also, the territorial distribution of the cases filed is becoming more widespread whereby in particular Milan is taking a more active role.
(3) The UPC remains an interesting venue for preliminary injunctions and inspection proceedings, since they account for more than 20% of all infringement-related actions at the UPC.
