Summary of the 6 UPC Cases

Paris Central Division

6 March 2024

05 : 29 – 07 : 35

Scope of Rule 262.1(B) RoP : whether access to written pleadings includes registry communications and court orders

• Bitzer filed action against Carrier
• Carrier filed late opt-out; statement of claim had defects remedied after opt-out
• August Debouzy requested access to registry notifications and communications between claimant and registry

• Rule 262.1(B) of the RoP
• UPCA provisions on public access

Rule 262.1(B) applies only to written pleadings and evidence lodged by parties, not to communications between registry and parties, nor court orders

Clarifies narrow scope of document access – limited to party-submitted materials only

Court of Appeal (UPC)

10 April 2024

07 : 40 to 20 : 30

Whether members of the public may access written pleadings and evidence during ongoing proceedings based on general interest

• Nordic-Baltic Division granted access to Chris Stothers (journalist) to statement of claim and evidence from Ocado
• Ocado appealed arguing that access should be restricted to post-decision phase only

• Rule 262.1(B) RoP
• UPCA Article on public proceedings
• principles of public access to justice

• General interest access permitted only after case concludes (decision or settlement)
• Specific interest access permitted during proceedings
• Requests must list documents and explain purpose/necessity
• Balance of interests test required
• Court may impose NDA-type restrictions
• Access cannot be granted if request is abusive or violates public order

Establishes comprehensive framework for public access balancing transparency with protection of confidential information and proceedings integrity

Paris Central Division

24 June 2024

20 : 40 – 25 : 55

Whether UPC proceedings should be stayed pending EPO opposition decision

A claimant initiated revocation proceedings at the Paris Central Division (UPC) against a defendant, seeking to invalidate European Patent No. EP 3 430 921. An applicant party to parallel EPO opposition proceedings on the same patent submitted an access request under Rule 262.1(b) RoP on November 15, 2023.

• Article 33(10) UPCA
• Rule 295 RoP
• Concept of « rapid decision » from EPO

• General principle: no stay of proceedings at UPC
• Stay only permissible if rapid EPO decision can be expected
• Court has discretionary power on « rapid decision » assessment
• UPC and EPO decisions are not irreconcilable (later decision prevails)
• Duplication of proceedings is inevitable and accepted
• No likelihood-of-success review required (unlike French practice)

• Strongly restricts stay of proceedings
• Prioritizes UPC efficiency over parallel EPO coordination
• Establishes that procedural duplication is acceptable cost of parallel proceedings

Court of Appeal

28 May 2024

27 : 54 – 38 : 00

Whether UPC proceedings should be stayed pending the outcome of parallel EPO opposition proceedings on the same patent, and what standard should apply to determine « rapid decision » from the EPO as contemplated by Article 33(10) UPCA and Rule 295 RoP.

• Procedural Timeline:
  • June 28, 2024: Bitzer filed notice of opposition at the EPO
  • June 29, 2024: Bitzer filed revocation action before UPC against Carrier
  • Carrier filed request for acceleration at EPO and request for stay at UPC
  • EPO scheduled oral procedure for October 2024
  • UPC scheduled oral hearing for June 2024 (4-month gap)
  • EPO attempted to bring case forward
  • Carrier refused alternative April dates
• Substantive Context:
  • Same patent involved in both proceedings
  • Similar arguments for invalidity in both actions
  • Carrier argued the EPO opposition had broader territorial and substantive scope than UPC revocation action

• Article 33(10) UPCA: Court must take proceedings when a rapid decision may be expected from pending EPO action
• Rule 295 RoP: Parallel provision to Article 33(10)

• First Instance Court Decision
  • Rejected stay of proceedings on single ground: rapid EPO decision could not be expected
  • No assessment of likelihood of success of opposition (unlike French practice)
  • Reasoning: At that time, EPO had not yet scheduled oral procedure; no reliable prediction of timing
    possible
• Foundational Principles in front of Court of Appeal:
  1. No Stay as General Rule: « There should generally be no stay of proceedings at the UPC »
  2. One-Year Timeline Objective: Proceedings must be conducted so oral hearing occurs within one year of
     statement of claim
  3. Non-Irreconcilability of Decisions:
     • UPC and EPO decisions are not irreconcilable, later decision prevails
     • Later courts can take into account earlier decision from another forum
     • This eliminates theoretical need for stay to prevent contradictions
  4. Narrow Exception « Rapid Decision » Standard:
     • Exception applies only if rapid EPO decision can be expected based on circumstances
     • Court has discretionary power to assess whether decision will be « rapid »
     • Acceleration requests from EPO are never sufficient – acceleration rarely enables EPO decision
       within UPC timeframe
  5. Application to Facts:
     • EPO oral procedure: October 2024 vs. UPC oral hearing: June 2024
     • Four-month gap is decisive; too substantial to justify stay
     • Court of First Instance correctly rejected stay
  6. Duplication as Inevitable:
     • Duplication of proceedings is acknowledged but deemed inevitable
     • Only alternative would be very long stay (2-3 years as in France) incompatible with UPC one-year
       guideline
     • Long stay conflicts with defendant’s interest in obtaining timely freedom-to-operate decision
  7. Party Conduct Considerations:
     • Opponent refused EPO acceleration, would have reduced opponent’s preparation time significantly
     • Court recognizes fairness considerations regarding party’s right to adequate preparation time
  8. Right to Be Heard:
     • Generally one round of pleadings sufficient for procedural issues like stay requests; two rounds
       not required
     • No violation of right to be heard in first instance

• For UPC Practice:
  • Heavily restricts stay of proceedings – establishes near-absolute default rule against stays
  • Prioritizes UPC efficiency over coordination with parallel proceedings
  • Rejects French-law approach – no likelihood-of-success assessment required
  • Clarifies « rapid decision » standard as highly discretionary and fact-dependent, with strong presumption against satisfaction
• For Litigants:
  • Very difficult to obtain stay
  • Only viable if EPO decision timing overlaps significantly with final UPC decision deadline
  • Must accept procedural duplication as normal cost of parallel proceedings
  • Cannot rely on EPO acceleration to justify UPC stay
• For System Design:
  • UPC establishes independence from patent office proceedings
  • Demonstrates commitment to speedy first-instance resolution despite parallel EPO actions
  • Accepts risk of inconsistent outcomes as preferable to extended delays

Court of Appeal

17 April 2024

39 : 15 to 42 : 38

Application of Ocado framework to third-party access requests based on specific interest in parallel EPO opposition

• Party to EPO opposition (different claimant than UPC case) requested access to ongoing UPC revocation proceedings involving same patent
• Requested pleadings, evidence, invisible documents, and future documents

• Rule 262.1(B) RoP
• Ocado decision principles on balance of interests

• Granted: immediate access to written pleadings and evidence (specific interest recognized, may influence EPO outcome)
• Refused: court-generated documents (outside scope of Rule 262.1(B))
• Refused: future/invisible documents (must precisely identify documents, cannot require piecemeal provision)
• No restrictions imposed (parties did not request confidentiality measures)
• Distinction recognized: revocation actions have broader public interest than infringement actions

• First application of Ocado framework
• Clarifies that invisible documents must be requested at correct timing
• Confirms narrow scope of access rules (pleadings and evidence only)
• Shows specific interest easier to establish than general interest

Paris Local Division

28 May 2024

42 : 43 to the end

Whether language of proceedings should be switched from French to English for fairness reasons

• Korean company filed infringement action in French
• French defendant opposed
• Defendant requested forced intervention of Korean supplier
• Both defendant and intervener requested language change to English
• Defendant given March 18 deadline for counterclaim
• Intervener joined in early March with less than one month to respond

• Article 49 UPCA
• Article 322 RoP
• Fairness principles established in Court of Appeal decision

• Court rejected language change from French to English
• Court rejected extension request for intervener
• Intervener bound by same deadlines as supported party
• Reasoning: claimant made efforts in French
• Defendant is decisive factor but claim rejected despite defendant’s agreement

• Demonstrates restrictive application of language fairness rules
• Creates disadvantage for late interveners; highlights practical difficulties in UPC defense strategy
• Suggests contract law implications for indemnification clauses