Clifford Chance

As the UPC transforms patent litigation in Europe, UPC judges balance their national experience with the aim of uniform doctrines on patent litigation.

The Unified Patent Court ("UPC"), entered into force on 1 June 2023, represents a significant shift in the landscape of patent litigation within the European Union. Established to centralise and streamline patent disputes, the UPC aims to provide a uniform and efficient judicial system for patent enforcement and revocation across participating EU member states. This court is designed to reduce the complexity and cost associated with multi-jurisdictional patent litigation, thereby fostering innovation and economic growth within the EU.

One of the initial concerns prior to the entering into force of the UPC was that UPC judges would be influenced – or even biased – by the laws and jurisprudence of their own countries, effectively maintaining fragmentation across jurisdictions rather than unifying the approach across the European region. A specular concern was instead that the UPC would have created a separate doctrine, totally disconnected from the national experiences and thus creating a system too remote and arguably obscure for Italian market leaders. Fast forward 20 months, evidence suggests that we may be instead moving in a different direction, where harmonisation coexists with national (best) practices and learnings, creating effectively new (uniform) doctrines while still considering national cultural contributions.

A couple of cases from the Local Division (LD) of Milan may be the perfect example of this (work-in-progress) legal "melting pot". 

1. Preliminary Injunctions: how national Italian experience is serving the entire UPC system

From an initial review of the cases decided by the Milan LD of the Court of First Instance of the UPC, there is a notable 40% preference for initiating proceedings through preliminary injunctions rather than the standard procedure. This is significantly higher compared to other local divisions, such as Dusseldorf (17.8%), Munich (12.9%), and Paris (2.5%).

The difference can be attributed to the Italian national practice where favourable procedural requirements make parties and courts more familiar with preliminary injunction proceedings, compared to other European countries.

In national patent disputes, along with preliminary injunction, it is common that a plaintiff requests a special urgent measure (called descrizione) aimed at having access to defendant premises to acquire and/or preserve evidence of the alleged infringement that would not otherwise be available to the plaintiff. Perhaps not so surprisingly, the Milan LD has been frequently asked to handle requests for similar preserving evidence measures, with decisions that have been cited and used among other LDs of the UPC.

By way of example, in Progress Maschinen & Automation AG against AWM S.R.L. and Schnell S.P.A (UPC_CFI_286/2023), the Milan LD issued an order on September 25, 2023, involving the preservation of evidence and inspection of premises related to a patent infringement claim. The court found that the claimant had provided sufficient evidence to support the claim of patent infringement, including information from the defendants' website and a YouTube video. The court granted the ex-parte order based on the urgency of the situation and the risk that evidence could be easily removed or destroyed if the defendants were informed beforehand.  Similarly, the Paris LD of the UPC issued a procedural order on March 1, 2024, involving the preservation of evidence related to a patent infringement claim by C-Kore Systems Limited against Novawell (UPC_CFI_397/2023). The court followed the decision of the Milan LD and granted an ex-parte order for seizure ("saisie"), allowing the preservation of evidence at Novawell's premises. The court found that C-Kore had provided sufficient evidence to support the claim of patent infringement, including a commercial brochure and website extract. The Paris LD also justified the ex-parte order based on the demonstrable risk of evidence being destroyed or otherwise ceasing to be available.

2. The Milan LD deviates from national practice on patent limitation

While the use of preliminary injunctions in the Italian context clearly reflects the practitioners' existing comfort and expertise in using such tools, this has not resulted in a constant bias of the UPC judges of the Milan LD in favour of previous national practices on patent law. The case study on the issue of patent limitation presented below serves as an excellent example of this.

Under Italian patent law, there is a certain degree of flexibility with regard to patent limitation, resulting in a dynamic and responsive approach to patent litigation that gives patent holders the possibility to affect the course of a pending dispute on the validity of the patent. In this context, the possibility of limiting a patent even during provisional proceedings is generally accepted in Italy, as evidenced by the case of the Court of Turin, Merck Sharp & Dohme Corp. and Merck Sharp & Dohme Italia S.p.A. v. Sandoz S.p.A [2011]. 

The patent owner sought to limit the scope of its patent during the proceedings filing a request before the Italian IP Office (UIBM). The other party in the provisional proceedings challenged the validity of the limitation, on the basis that the pending proceedings, by its nature of provisional proceedings, cannot result in a declaration on the validity or invalidity of the patent. Notwithstanding, the court found that the limitation request was valid and effective, in accordance with Article 79 of the Italian Code of Industrial Property. This provision allows a patent holder to limit the scope of their patent through an administrative procedure before the UIBM at any time, rather than having to go through a court process to declare the patent partially invalid. If the patent, pending the limitation before the UIBM, is subject to a court dispute, the judge should consider the patent as limited, if necessary prolonging the pending proceedings.   

In Insulet Corporation v A Menarini Diagnostics srl (UPC_CFI_400/2024), the UPC judges of the Milan LD have not followed the Italian national practice and have denied a request for provisional measures (a preliminary injunction) in a case involving the alleged infringement of a medical device patent. The claimant patent owner had submitted auxiliary requests to amend the patent, but the Milan LD ruled that such requests were inadmissible in provisional measure proceedings. According to UPC case law, auxiliary requests to amend a patent under the UPC Rules of Procedure (RoP) are only allowed in the defense to a counterclaim for revocation (Rule 30.2 RoP) or in the defense to revocation (Rule 50.2 RoP). This decision means that these requests could only be made in the main proceedings, where the court has the authority to make a final decision on the patent's validity and there is no need for urgent and rapid decisions.

3. Conclusion

As the UPC standardises its practices across Europe, national legal developments and experiences continue to play a significant role in shaping the evolution of European patent law. The Italian LD showcases how national practices can coexist within the UPC's broader, unified structure, offering valuable insights into the court's operation across different jurisdictions. This dynamic interplay between harmonisation and national influence ensures that the UPC remains a flexible and adaptive legal framework, capable of addressing the diverse needs of patent holders across Europe.