What themes or issues are you most eager to engage in discussions about at the Conference?
There are many interesting topics, for instance the application of long-arm-jurisdiction (If you like to read more about jurisdiction you can do so on this article) and how the UPC can harmonize European patent law in collaboration with other stakeholders such as the EPO and national courts. Also, which legal issues may trigger a CJEU referral by the UPC. Last but not least, it would be interesting to discuss whether the UPC can already be considered a or even “the” center of gravity for resolving global patent disputes.
In your opinion, what remains the biggest uncertainty or risk for litigators operating in UPC space?
I believe the biggest challenge for litigators is to properly cope with the front-loaded nature of the proceedings within only a short amount of time combined with the relatively strict late-filing case law.
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 one-size-fits-all solution. In my mind, venue selection requires a careful and case-specific analysis weighing a variety of factors. Some relevant factors are predictability, quality, the extent of pertinent particularly technical experience on the bench, speed, costs, the availability of meaningful relief and the domicile and nature of the defendant. Also, it should be considered whether there is helpful or risky UPC or national case law. In the end it boils down to where you have the best or easiest shot at reaching the commercial objective of the litigation. In larger campaigns, a hybrid litigation approach using both the UPC as well as selected national courts may be quite interesting. In fact, this already happens in several disputes wherein more often than not German national courts are chosen in addition to the UPC. Further, there are smaller disputes which may not justify the level of cost which UPC litigation requires. So, to some extent national courts will remain relevant in any event. Yet, in many Contracting Member States the case numbers are rapidly decreasing, which could be a continuing trend.
Do you expect a gradual harmonization between EPO case law and UPC jurisprudence, or will strategic divergence remain a feature of European patent litigation?
I clearly expect a gradual harmonization. At least, this is aimed at by both the UPC and the EPO as several decisions of the Court of Appeal as well as the Enlarged Board of Appeal articulate. Objectively, divergence does not make a lot of sense - it creates unnecessary practical hurdles and does not further predictability for industry. That said, differences in the application of the case law will likely remain at least for a while and it is up to the litigants to try to use those strategically in their favor.
Looking ahead, how do you envision the UPC’s role evolving in Europe’s patent enforcement ecosystem, what will “success” for the UPC look like in five years?
There are multiple ways of measuring success. A key one would be acceptance as a reliable forum by litigants across the world and of any “size”. Another one would be the availability of high-quality decisions in a reasonable timeframe with persuasive effect in other jurisdictions. Yet another one would be a decision not to prolong the transitional period. In any event, I would dare to say that the UPC is a success story already today and I have no reason to believe that this will change in five years.
What’s one small UPC moment — a case, a conversation, a courtroom insight — that made you think, “Yes, this is history in the making”?
It is a series of moments in a roller-coaster landmark case – 10x Genomics v NanoString. Appearing in the very first UPC trial on behalf of the claimant where we were an hour late because the case management system sent a wrong scheduling notification. Yet, we could still win the first inter partes preliminary injunction based on a unitary patent granted by the Munich Local Division. A subsequent moment on appeal, when president Dr. Grabinski opened the very first trial of the Court of Appeal by stating: “This is a historic moment.” Then losing the preliminary injunction in view of invalidity concerns of the Court of Appeal. And last but not least, the moment when the EPO confirmed validity of the unitary patent in parallel opposition proceedings triggering settlement.
Interviewed by Paula Terzini Leite
