What themes or issues are you most eager to engage in discussions about at the Conference?
The following themes: (i) Doctrine of equivalents; (ii) Role of file history in claim construction; (iii) “Long arm” jurisdiction of the UPC; (iv) Conditions for the grant of PIs.
In your view, what outstanding questions remain in UPC litigation that the Conference has the potential to address?
The list of outstanding questions is probably too long. Here’s a few issues: (i) SEPs and FRAND - in particular, the issue of FRAND license determination (Sun Patent Trust v Vivo Mobile Communication Co) and confidentiality regimes applicable to the disclosure of licenses;(ii) Urgency and balancing of interest in PIs; and (iii) Implications of the UPC international jurisdiction.
From a litigator’s viewpoint, what do you consider the most important decisions of the UPC up to date and why?
There are several important decisions, particularly those relating to those areas of patent law that are the most frequent object of disagreement between the parties, notably, claim construction and inventive step.
To mention a few: Amgen v Sanofi-Aventis/Regeneron (UPC_ CoA_528/2024 and UPC_CoA_529/2024), Edwards v Meril (UPC_CoA_464/2024 et al);
On claim construction, Raccords et Plastiques Nicoll v First Plast (UPC_CFI_612/2024);
On added matter, again Amgen v Sanofi-Aventis & Regeneron (UPC_ CoA_528/2024, UPC_CoA_529/2024).
What qualities or skills do you believe distinguish a successful litigator before the UPC compared with national patent courts?
The ability to think at the dispute from a “cosmopolitan approach” that transcend the national legal tradition, be creative and willing to look at other jurisdictions’ approach to the issues at stake.
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?
Providing strategic advice requires taking all aspects of the potential dispute into account, including what national courts would have jurisdiction to hear the case in addition to the UPC, whether it would be possible to enforce more than one patent, thus bringing the action for infringement in both national and UPC courts, the strength and weakness of the asserted patent(s), whether your client or the other party can retaliate by bringing an action for infringement based on its patent(s), whether your client is the patentee or the alleged infringer.
Strategic advice must be also tailored in the client’s ultimate business goals. It is important to understand that there is no magic recipe that would always work.
From your experience or observation, how are defendants adapting (or should adapt) their strategies because of the UPC?
They have become more proactive. Most national clients who have not been exposed to patent litigation on a multijurisdictional scale are not familiar with protective letters or with the timing of the UPC, particularly in PIs.
The latitude of the patentee in selecting the Local Division where to sue is also a factor that may induce the alleged infringer in taking preemptive actions for non-infringement and/or invalidity. Also monitoring the progress in the status of patent applications is becoming increasingly common.
Timing is critical. What “urgency” criteria do you consider when deciding to file a PI application before the UPC?
Although the UPC position on urgency is that it must be assessed on a case by case basis, in line with the decision in Dyson v SharkNinja (UPC_CFI_443 /2023, 3 September 2025) and Hand Held Products v Scandit (UPC_CFI_74/2024), I recommend taking actions within 2 month from the date on which the applicant has reliable knowledge of all the facts which make an action for interim measures likely to succeed including evidence to credibly substantiate those facts.
Has your strategy for gathering and presenting evidence changed in view of the UPC’s early PI jurisprudence (e.g., limiting validity attacks, showing imminent infringement)? If so, how?
The UPC procedure is heavily front-loaded, this means that the evidence gathering process must start as early as possible and be as comprehensive and thorough as possible because it is extremely hard to remedy an omission. This also requires that the litigation strategy must be defined in advance, taking into account all possible scenarios and making contingency plans for each of them.
interviewed by Paula Terzini Leite
