From a litigator’s viewpoint, what do you consider the most important decisions of the UPC up to date and why?
With more than two years of UPC case law behind us, we are at a stage where we can already see trends emerging from the Central, Local and Regional Divisions of the UPC. However, there is still relatively limited case law from the Court of Appeal, and ultimately it is these decisions which will shape the future of the Court.
As a result – and perhaps because I was involved with arguing the case for the successful party at both first instance and on appeal – the recent decision from the Court of Appeal in Edwards v Meril sticks out as a particularly notable decision for me. Together with another decision which was handed down on the same day (more about that later), this was the first time that the Court of Appeal laid out its approach to the assessment of inventive step. Coming from a practice where I spend a significant amount of my time coordinating disputes across Europe, one of the areas where I see most divergence between national systems is the approach to inventive step, and accordingly it was always going to be interesting to see which way the Court of Appeal went on this issue.
For me, the other particularly significant Court of Appeal decision is 10x v Nanostring which laid out the test for the grant of provisional relief. This decision has set the bar for PI practice at the UPC and is something we land up discussing almost weekly in our practice.
In addition to these appeal decisions there are many first instance decisions which have been particularly exciting – early decisions applying long-arm jurisdiction and the first applications of the doctrine of equivalence immediately come to mind - but ultimately this may all change when the Court of Appeal decides on these issues at some point in the future.
What qualities or skills do you believe distinguish a successful litigator before the UPC compared with national patent courts?
With the UPC being an entirely new system, the one thing which I have seen set people apart is being adaptable. It isn’t possible to rely on past practices at the UPC: you need to develop new practices that suit the new system, and then allow these to evolve as the Court’s own practices evolve.
Secondly, with most panels including a Technically Qualified Judge and addressing both validity and infringement in a single hearing, having an understanding (and ideally experience) of handling both the technical and legal aspects of a case is a significant advantage.
Thirdly, a good understanding of the national systems of the Contracting Member States provides useful insight. In one respect it allows for a strategy to be develop which embraces the strengths of the UPC and the different national systems (see a bit more about this below), and if a strategy including the UPC is adopted, then it allows some insight into how particular Judges may approach issues (including both practical and legal issues).
Finally, it requires a disciplined approach to preparation. The front-loaded nature of these cases makes early (and thorough) preparation essential to put forward the best arguments. Litigators who are able to embrace this challenge offer their clients’ a better chance at success.
How would you advise a patent holder considering whether to bring a case in the UPC versus a national court now (or in the near future)? In your opinion, are national courts still relevant within the Contracting Member States?
There is no doubt in my mind that national litigation still plays a very significant role in litigation strategy, including within the Contracting Member States. There are many advantages of the UPC, but the system is not without its limitations, and in some instances the national courts present a better forum for a party.
Every case is different and requires its own analysis as to whether litigating in the UPC or the national courts (or both) is more likely to provide a successful outcome for a client. For example, if infringement is primarily occurring in a Contracting Member States where the national court is able to provide relief quickly it will be a very different assessment to a situation where the relevant national court is unable to match the speed of the UPC. Another consideration might be whether a particular case is better suited to a ‘bifurcated’ approach, which may then favour national actions in Germany or Austria, or alternatively litigating somewhere with a strong presumption of validity such as Denmark, rather than a UPC action. These different considerations all need to be considered holistically, taking into account both UPC and national practices (of all relevant jurisdictions), to develop a strategy which can meet a client’s expectations.
How do you understand the relationship between the EPO’s and the UPC’s reasoning on validity, inventive step and added matter? Do UPC judges tend to follow the EPO’s trends, or are you seeing distinct legal interpretations emerging?
The recent decisions from the UPC Court of Appeal in Edwards v Meril and Sanofi v Amgen highlighted that the UPC will develop its own tests for the assessment of validity, independent from that of the EPO. Prior to these decisions there was a clear division between different first instance divisions of the UPC, with some divisions indicating that they would follow the EPO’s approach to the assessment of inventive step, with others diverging and applying different tests. Unlike some earlier decisions from first instance divisions, the Court of Appeal has moved away from the EPO’s “problem-solution” approach, rather favouring a “holistic” approach to the assessment of inventive step.
The fact that the two divisions of the Court of Appeal issued these decisions using a common test is an encouraging sign that the Court appreciates the need for legal certainty, and is intending to have a unified (excuse the pun) approach to these issues.
In other aspects we have seen the UPC aligning itself with the EPO. For example, the UPC has adopted the EPO’s approach to the assessment of priority as set out in G1/22. However, this is only at first instance so we may yet see further developments in this respect.
We are yet to see whether the EPO will seek to align itself with the UPC, but as a much larger organisation, if that does happen, I expect it will happen take more time.
Ultimately, what matters is that the tests adopted by the UPC are clearly defined and consistently applied as this provides a predictable system for litigants, which will encourage parties to use the system.
Lisbon is hosting this first UPC Conference — is there a place you are eager to go check out in the city or a must-see if you have already been there before?
I’m fortunate enough to have been in Lisbon a few times in the past, and have found some fantastic spots along the way (there are many). For anyone who enjoys a Pisco Sour, A Cevicheria is the place to be (and has the benefit of a large Octopus hanging from the ceiling which makes for a great photo). And for those who are looking for something a bit more adventurous over the weekend, mountain biking in the Sintra Forrest is some of the best I’ve found in Europe – let me know if you want some trail recommendations.
Interviewed by Paula Terzini Leite
