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European Patent Litigation in the Shadow

of the Unified Patent Court

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This book is dedicated to Rothna Begum.

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European Patent
Litigation in the
Shadow of the
Unified Patent Court

Luke McDonagh
City Law School, City University of London, UK

Cheltenham, UK + Northampton, MA, USA

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© Luke McDonagh 2016

All rights reserved. No part of this publication may be reproduced, stored in a

retrieval system or transmitted in any form or by any means, electronic,
mechanical or photocopying, recording, or otherwise without the prior
permission of the publisher.

Published by
Edward Elgar Publishing Limited
The Lypiatts
15 Lansdown Road
Cheltenham
Glos GL50 2JA
UK

Edward Elgar Publishing, Inc.

William Pratt House
9 Dewey Court
Northampton
Massachusetts 01060
USA

A catalogue record for this book

is available from the British Library

Library of Congress Control Number: 2016935774

This book is available electronically in the

Law subject collection
DOI 10.4337/9781784714741

ISBN 978 1 78471 473 4 (cased)

ISBN 978 1 78471 474 1 (eBook)

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01

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Contents
Acknowledgements vii
Table of cases viii
Table of legislation x

1 Introduction 1
A new beginning for the European patent system? 1

2 European patent litigation under the European Patent

Convention (EPC) 10
European patent litigation: from the EPC to the UPC 10
Comparative analysis of the jurisdictions of the UK,
Germany, France and the Netherlands 17
Marking the differences between the four jurisdictions:
looking ahead to the UPC 66
Summary: what are the key challenges the UPC needs to
address? 78

3 Analysing the reforms: the Unified Patent Court (UPC) and

the European Patent with Unitary Effect (UP) 79
The EU patent reform package 79
The Unified Patent Court 82
The European Patent with Unitary Effect (Unitary Patent) 111
Summary of the key aspects of the UPC and the UP 119

4 Exploring perspectives of the Unified Patent Court and the

Unitary Patent within the business and legal communities 122
Overview of the study 122
Empirical research methodology 122
Key concerns for users of the UPC 139
The opt-out 147

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vi European patent litigationn in the shadow of the UPC

Business sector issues 150

What will the impact of the reforms be on the legal
community? 155
Summary of key issues for users of the new system 157

5 Conclusion 158
The UPC out of the shadows: looking ahead to 2017 158
From fragmentation to unification? Onwards to 2017 169

Bibliography 171
Annex: interview questions 177
List of abbreviations 190
Index 191

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Acknowledgements
I am grateful to a number of people who assisted me in the creation
of this book. First and foremost, I would like to thank Christian
Helmers for contacting me in 2011 and offering me the chance to
collaborate with him on an interdisciplinary patent litigation project
with Katrin Cremers, Max Ernicke, Fabian Gaessler, Dietmar
Harhoff, Paula Schliessler, and Nicolas van Zeebroeck. The work
that came out of that project, which to some extent anticipated the
current EU patent reforms, proved invaluable when considering the
Unified Patent Court over the course of this book.
A large number of academics have encouraged and supported me
since my days as an PhD student at Queen Mary. University of
London, through my time as a post-doctoral fellow at the London
School of Economics (LSE), my lectureships at Cardiff University
and The City Law School, and my visiting fellowship at Waseda
University. In this, there are simply too many to mention, but I feel
I must thank Jonathan Griffiths, Dev Gangjee, Alain Pottage,
Tatiana Flessas, Siva Thambisetty, Andrew Murray, Marc Mimler,
Noam Shemtov, Duncan Matthews, Guido Westkamp, Uma Suther-
sanen, Gaetano Dimita, Leslie Lansman, Georg von Graevenitz, Ian
Walden, Malcolm Langley, Johanna Gibson, Phillip Johnson, Tim
Press, Enrico Bonadio, Mara Malagodi, Tatsuhiro Ueno and
Kazuhiro Ando.
I am grateful to the UK Intellectual Property Office, who
supported the underlying research of this book with funding during
2014.
I would like to give special thanks to Rothna Begum in London
and the McDonagh family in Galway – Thomas, Bridget, Sarah,
Nicholas and Paul.

Luke McDonagh, January 2016

vii
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Table of cases
EUROPEAN UNION CASE LAW
CJEU, Opinion 1/09, OJ C211/28 (2011) ......................................... 112, 169
Case C-539/03 Roche Nederland BV v Frederick Primus [2006] ECR I-
6569 ............................................................................................. 13, 62
Case C-04/93 Gesellschaft für Antriebstechnik mbH & Co. KG (GAT) v
Lamellen und Kupplungsbau Beteiligungs KG (LuK) [2006] ECR
I-6523 ................................................................................................ 62
Joined cases C-274/11 and C-295/11, Spain and Italy v Commission,
Judgment of 16 April 2013, OJ C175/1 (2013) ................................... 82

GERMAN CASE LAW

Bundesgerichtshof (BGH) decision of 17 July 2012, as reported by
International Review of Intellectual Property and Competition Law
(IIC) 44 (2013), 351, Pallet Container II (X ZR 97/11) ...................... 86
Bundesgerichtshof (BGH) decision of 5 December 2006, as reported by
Gewerblicher Rechtsschutz und Urheberrecht international (GRUR
Int.) (2007), 221, Simvastatin (X ZR 76/05) ....................................... 87

DUTCH CASE LAW

Danisco A/S v Novozymes A/S, Court of Appeal (The Hague), 26 February
2013, Case no. 200.094.921/01 .......................................................... 65

UK CASE LAW
Actavis Group HF v Eli Lilly & Co [2012] EWHC 3316 (Pat) ..................... 24
Cephalon & Ors v Orchid & Anor [2010] EWHC 2945 (Pat) ...................... 23
Gerber Garment Technology v Lectra Systems [1995] RPC 383 ................. 87
Glaxo Group Ltd v Genentech Inc & Anor [2008] EWCA Civ 23; [2008] Bus
LR 888 ............................................................................................... 25

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Table of cases ix

Merck Sharp Dohme Corp v Teva Pharma BV [2012] EWHC 627

(Pat) ................................................................................................... 23
Novartis AG v Sun Pharmaceutical Industries BV [2013] EWCA Civ
1663 ................................................................................................... 14
Research in Motion UK Ltd v Visto Corp [2008] EWHC 819 (Pat); (2008)
31(5) I.P.D. 31033 .............................................................................. 28
SmithKline Beecham & Anor v Apotex Europe Ltd & Ors [2002] EWHC
2556; [2003] EWCA (Civ) 137 ..................................................... 23, 74
Unilin Beheer BV v Berry Floor NV [2007] EWCA Civ 364; [2007] FSR
25 ................................................................................................. 15, 25
Virgin Atlantic Airways Ltd v Zodiac Seats UK Ltd (formerly known as
Contour Aerospace Ltd) [2013] UKSC 46; [2013] 3 WLR 299 ......... 20,
25–6

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Table of legislation

EUROPEAN implementing enhanced

cooperation in the area of the
LEGISLATION creation of unitary patent
protection with regard to the
Agreement on a Unified Patent Court applicable translation
(The UPC Agreement), arrangements (Translation
C175/01 (2013) ...... 2, 5–6, 16, Regulation), OJ L 361/89
79–80 (2012) ........................ 2, 16, 80
Brussels Convention on Jurisdiction Consolidated version of the Treaty
and the Enforcement of on European Union, OJ
Judgments in Civil and C115/13 (2008) .................. 10
Commercial Matters of 27 Consolidated version of the Treaty of
September 1968 (Brussels the Functioning of the
Convention), OJ L 304 European Union (TFEU), OJ
(1978) ............................. 83–4 C326/61 (2012) ............. 10, 20
Charter of Fundamental Rights of Convention for the European patent
the European Union, OJ C83/ for the common market
389 (2010) .......................... 10 (Community Patent
Council Regulation (EC) No. Convention) 76/76/EEC, OJ L
2100/94 of 27 July 1994 on 17 (1976) ............................ 86
Community plant variety Convention of Sept 16 1988 on
rights, OJ L 227 (1994) ....... 89 jurisdiction and the
Council Regulation (EC) No. 44/ enforcement of judgments in
2001 of 22 December 2000 on civil and commercial matters
jurisdiction and the recognition (Lugano Convention), OJ L
and enforcement of judgments 319 (1988) ..................... 13, 83
in civil and commercial matters Convention on the Grant of
(Brussels Í), OJ L 12 European Patents agreed on 17
(2001) ........................... 13, 83 October 2000 (see OJ EPO 549
Council Regulation (EC) No. 873/ (2001)) ............................ 3, 12
2004 of 29 April 2004 Directive 98/44/EC of the European
amending Regulation (EC) No. Parliament and of the Council
2100/94 on Community plant of 6 July 1998 on the legal
variety rights, OJ L 162 protection of biotechnological
(2004) ................................. 89 inventions, OJ L 213
Council Regulation (EU) No. 1260/ (1998) ........................... 88–90
2012 of 17 December 2012

x
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Table of legislation xi

Directive 2001/82/EC of the protection certificate for plant

European Parliament and of the protection products, OJ L
Council of 6 November 2001 198/30 (1996) ................... 103
on the Community code Regulation 864/2007 of the
relating to veterinary medicinal European Parliament and of the
products, OJ L 118 (2001) ... 89 Council of 11 July 2007 on the
Directive 2001/83/EC of 6 law applicable to
November 2001 on the non-contractual obligations
Community code relating to (Rome II), OJ L 199/40
medicinal products for human (2007) ................................. 85
use (as amended), OJ L 311 Regulation 469/2009 concerning the
(2001) ........................... 87, 89 supplementary protection
Directive 2004/48/EC of the certificate for medicinal
European Parliament and of the products, OJ L 152
Council of 29 April 2004 on the (2009) ......................... 89, 103
enforcement of intellectual Regulation No. 1215/2012 of 12
property rights, OJ L 195 December 2012 on jurisdiction
(2004) ........................... 35, 89 and the recognition and
Directive 2009/24/EC of the enforcement of judgments in
European Parliament and of civil and commercial matters
the Council of 23 April 2009 (recast) (Brussels I Regulation
on the legal protection of recast), OJ L 351 (2012) ..... 13,
computer programs, OJ L 111 83
(2009) ................................. 89 Regulation (EU) No. 1257/2012 of
Text of the European Patent the European Parliament and of
Convention, of 5 October 1973, the Council of 17 December
as revised by the Act revising 2012 implementing enhanced
Article 63 EPC of 17 December cooperation in the area of the
1991, and the Act revising the creation of unitary patent
EPC of 29 November protection (UP Regulation), OJ
2000 ................................ 3, 45 L 361/1 (2012) ........... 2, 16, 80
Treaty establishing the European UPC Rules of Procedure (2015) ... 6,
Economic Community, Mar. 94–5, 97–101, 103–4, 107,
25, 1957, 298 U.N.T.S. 3 141, 155
(Treaty of Rome) ................ 10
Treaty of Lisbon amending the
Treaty on European Union and DUTCH LEGISLATION
the Treaty establishing the
European Community, signed Rijkswet van 15 december 1994,
at Lisbon, 13 December 2007, houdende regels met betrekking
and entered into force on 1 tot octrooien (Patent Act
December 2009, OJ C 306 1995) .................................. 57
(2007) ................................. 81 Wetboek van Burgerlijke
Regulation 1610/1996 concerning Rechtsvordering (Rv) (Code of
the creation of a supplementary Civil Procedure) ............. 57–8

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xii European patent litigationn in the shadow of the UPC

FRENCH LEGISLATION Geistigen Eigentums, BGB part

I (dated 11 July 2008) .......... 35
Code de la propriété intellectuelle Patentgesetz (PatG) (German Patent
(CPI) version consolidée au 8 Law) (as amended by the Law
août 2015 (French Code of of 31 July 2009). ................. 31
intellectual property) .......... 45 Zivilprozessordnung (ZPO)
Code de la procédure civile (CDC) (German Code for Civil
(Code of civil procedure) .... 45 Procedures) ......................... 31
Code de l’organisation judiciaire Rechtsanwalts-vergütungsgesetz
(judicial organization (RVG) (Remuneration Code
code) ............................. 45, 53 for Lawyers’ Costs) ............. 32

GERMAN UK LEGISLATION
LEGISLATION Civil Procedure Rules 1998 (CPR)
(SI 1998/3132) .................... 19
Gerichtskostengesetz (GKG) Civil Proceedings and Family
(German Code for Court Proceedings Fees
Costs) ................................. 32 (Amendment) Order 2015 (SI
Gesetz über internationale 2015/576) ........................... 26
Patentübereinkommen Patents Act 1977 .......................... 18
(IntPatÜG) (German Civil
Code) .................................. 31
Gesetz zur Verbesserung der
Durchsetzung der Rechte des

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1. Introduction
A NEW BEGINNING FOR THE EUROPEAN
PATENT SYSTEM?
Until recently, only scant data were publicly available on the
subject of patent litigation in EU member states, and as a result it
was difficult to accurately examine how prevalent patent litigation
was from state to state, how costly it was and how significant the
divergences were between the various systems. However, in recent
years a number of major studies – based on analysis of carefully
gathered empirical patent case data – have been published.1 These
studies have shed new light on the subject of patent litigation in EU
member states, particularly in the major jurisdictions of the UK,
Germany, France and the Netherlands, where the vast majority of

1
The most prominent study is K. Cremers, M. Ernicke, D. Harhoff, C.
Helmers, G. Licht, L. McDonagh, et al. ‘Patent litigation in Europe’, ZEW
Discussion Paper No. 13-07 (2013), 1 (hereafter known as Cremers), available
at http://ftp.zew.de/pub/zew-docs/dp/dp13072.pdf. This study attempts to ana-
lyse all patent cases filed in the various jurisdictions during the period
2000–2008 (though cases may have been decided post-2008 since case lengths
can span a number of years post-filing). The Cremers data collection took
place during 2010–2012. The German and UK data are for the most part
accurate reflections of cases filed, but the data for the Netherlands and France
do not cover all cases filed, and are largely restricted to cases that were
adjudicated. Nonetheless, the Cremers paper represents the first authoritative
account of patent litigation in these four jurisdictions. See also the following
country-specific studies: P. Véron, ‘Patent infringement litigation in France’,
Mitteilungen der deutschen Patentanwälte 93 (2002), 386; C. Helmers and L.
McDonagh, ‘Patent litigation in the UK: an empirical survey 2000–2008’,
Journal of Intellectual Property Law & Practice 8 (2013), 846; T. Bouvet,
‘France’, in M.C. Elmer and C.G. Gramaenopoulos (eds), Global Patent
Litigation (Virginia: Bloomberg BNA, 2014), 546–89; and the European
overview given in N. Van Zeebroeck and S. Graham, ‘Comparing patent
litigation across Europe: a first look’, Stanford Technology Law Review 17
(2014), 655.

1
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2 European patent litigation in the shadow of the UPC

European patent ligation takes place. This leads us to the first

rationale for the writing of this book – it is now, for the first time,
possible to paint an accurate, detailed picture of the patent litigation
system in Europe. The first part of this book aims to paint that
picture, setting the scene by analysing and summing up the current
state of patent litigation in Europe’s major patent jurisdictions.
This brings us to the second rationale for the writing of this book
– the need to take account of the seismic shift represented by the
coming into force of the EU-driven European patent reform pack-
age. On 19 February 2013, the UK and 24 other countries signed an
intergovernmental agreement (the Agreement) to create a Unified
Patent Court (UPC), which will be a new specialist patents court
common to participating states.2 The provision of a new Unitary
Patent (UP) – known officially as the ‘European Patent with
Unitary Effect’ – is the other key aspect of the reforms. Overall, the
package of measures is designed to establish and enforce unitary
patent protection within the European Union, with the ultimate
ambition of unifying the European patent system as much as
possible.3 Moreover, a central aim of the establishment of the UPC

2
Agreement on a Unified Patent Court (The UPC Agreement), C 175/01
(2013), accessible at http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=
OJ:C:2013:175:0001:0040:EN:PDF.
3
Regulation (EU) No. 1257/2012 of the European Parliament and of the
Council of 17 December 2012 implementing enhanced cooperation in the area
of the creation of unitary patent protection (UP Regulation), OJ L 361/1 (2012)
and Council Regulation (EU) No. 1260/2012 of 17 December 2012 implement-
ing enhanced cooperation in the area of the creation of unitary patent
protection with regard to the applicable translation arrangements (Translation
Regulation), OJ L 361/89 (2012) – both documents accessible at http://
ec.europa.eu/internal_market/indprop/patent/documents/index_en.htm. For a
further explanation of the changes, see the EPO website: www.epo.org/
law-practice/unitary.html.
See also R. Romandini and A. Klicznik, ‘The territoriality principle and
transnational use of patented inventions: the wider reach of a unitary patent
and the role of the CJEU’, International Review of Intellectual Property and
Competition Law 44 (2013), 524; and M. Brandi-Dohrn, ‘Some critical
observations on competence and procedure of the unified patent court’,
International Review of Intellectual Property and Competition Law 43 (2012),
372.

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Introduction 3

and the UP is to offer inventors and businesses a more streamlined

and easy-to-use system that is also cost-effective. The second part
of this book gives academic consideration to all relevant aspects of
the reforms, and evaluates what the impact of the UPC and the UP
is likely to be on patent litigation in Europe in the short term and in
the long term.
Thus, over the course of this book I ask and answer a series of
questions: first, what is the current state of patent litigation in
Europe? Second, what are the aims and crucial features of the
reforms? Third, in practice will these reforms likely succeed at
achieving their overall aims; and, finally, what will the overall
picture of European patent litigation look like in the decades
following the coming into being of the new system? As explained
further on, one of the novel things about this book is the use of
interview data – gathered from patent experts in the legal and
business communities – to answer questions concerning the chal-
lenges facing patent litigants and their legal representatives in
Europe over the coming decades.
Following this introductory Chapter 1, Chapter 2 examines the
current state of European patent litigation, which, although it is
framed by the European Patent Convention (EPC), is actually
undertaken on a largely national basis.4 European Patents (EPs)
granted by the European Patent Office (EPO) must be validated –
and, subsequently, litigated – within national jurisdictions.5
National courts have the ability to issue binding rulings concerning
patent infringement within their national territories, and they may

4
Text of the European Patent Convention, of 5 October 1973, as revised
by the Act revising Article 63 EPC of 17 December 1991, and the Act revising
the EPC of 29 November 2000, available at http://documents.epo.org/projects/
babylon /eponet.nsf /0 / 00E0CD7FD461C0D5C1257C060050C376/$File / EPC_
15th_edition_2013.pdf, also accessible at www.epo.org/law-practice/legal-
texts/html/epc/2010/d/index.html.
5
See also The Agreement on the application of Article 65 of the
Convention on the Grant of European Patents agreed on 17 October 2000 (see
OJ EPO 549 (2001)) (hereafter known as the London Agreement), available at
http://documents.epo.org/projects/babylon/eponet.nsf/0/7FD20618D28E9FBFC
125743900678657/$File/London_Agreement.pdf.

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4 European patent litigation in the shadow of the UPC

also consider questions of patent validity – although the EPO

retains the final say on validity via its patent opposition service.6
Indeed, it is not uncommon for national patent litigation to take
place at the same time as parallel EPO opposition proceedings; and
the lengthy backlog at the EPO means that national courts some-
times rule on questions of validity and infringement before the EPO
Board of Appeals has reached a final decision regarding validity.7
Moreover, due to the fact that national courts have the ability under
the EPC to make decisions based on their own jurisprudence, the
courts in one EPC member state (e.g. the UK) may reach different
conclusions to the courts of another EPC member state (e.g.
Germany) when resolving the central questions of patent litigation:
what amounts to infringement of a patent in suit? Is the patent in
suit valid or invalid? In what circumstances is it appropriate to grant
a preliminary injunction to a patentee? And if EPO proceedings are
ongoing, should a stay of national proceedings be granted?
The precise intricacies of the way this system works are exam-
ined in Chapter 2 by assessing the state of patent litigation within
Europe‘s four key patent litigation venues: the UK (London),
Germany (Dusseldorf, Mannheim and Munich), France (Paris) and
the Netherlands (The Hague).8 As noted at the outset, until recently
there was a lack of empirical evidence concerning patent litigation
within these four major jurisdictions; in light of recently published
studies, this chapter explores litigation at an in-depth level in each
of the above territories.9 It is shown that each of these four major
jurisdictions has developed its own unique characteristics in the

6
See generally EPO, Patent Litigation in Europe: An overview of national
law and practice in the EPC contracting states (2013), www.epo.org/learning-
events/materials/litigation.html.
7
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L. McDon-
agh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No. 13-07
(2013), 1, 1–3.
8
As discussed further in Chapter 2, between them these four jurisdictions
handle the majority of European patent cases, with Germany by far the most
popular venue.
9
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No. 13-07
(2013), 1. See also European Patent Office (EPO), Patent Litigation in Europe:

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Introduction 5

field of patent litigation: the UK’s courts possess a well-earned

reputation for requiring broad disclosure on the part of both parties,
making use of a great deal of expert evidence, and conducting
lengthy and detailed (and, consequently, expensive) hearings on the
issues of patent validity and infringement; the German courts,
meanwhile, represent the most popular patent litigation venues in
Europe, and are often commended for providing parties with
relatively cost-effective and speedy infringement hearings, though
they are sometimes criticized for the complexities which can arise
due to the system of bifurcation – a process required by the German
Federal Constitution that is not present in any of the other three
jurisdictions – whereby the issues of infringement and validity are
resolved by separate courts in separate hearings; by contrast, the
French courts are admired for the unique set of saisie procedures
that enable a party to gain access to another company’s premises to
speedily and efficiently collect evidence on allegedly infringing
acts; and, finally, while for a long time the advantage to filing suit
in the Netherlands was the availability of cross-border injunctions –
now less common – in more recent years, the Dutch courts have
been praised for the speed and cost-effectiveness of their proceed-
ings, and the technical expertise of their judges. In Chapter 2 each
of these jurisdictions is examined in detail with respect to the key
aspects of the litigation process and the volume and nature of the
cases taken in the jurisdiction. The final part of this chapter sums
up the various commonalities and differences present in the key
jurisdictions of European patent litigation, shedding light on the
advantages and disadvantages of the patent litigation system as it is
currently framed.
Following this assessment of the current state of patent litigation
in Europe, Chapter 3 outlines the motivation behind the reforms –
the perceived need to provide a more efficient, cost-effective,
harmonious litigation system – as well as the structure of the
proposed reforms, i.e. the UPC and the UP. The key EU reformative
innovations – the Intergovernmental Agreement on a Unified Patent
Court10 and the two EU Regulations implementing enhanced
cooperation with regards to the creation of unitary patent protection

An overview of national law and practice in the EPC contracting states (2013),
available at www.epo.org/learning-events/materials/litigation.html.
10
UPC Agreement.

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6 European patent litigation in the shadow of the UPC

and facilitating translations of such patents as granted11 – are

discussed. The fact that Spain has, thus far, refused to sign up to
any part of the ‘reform package’ is noted here, as is the fact that
Poland has decided not to participate in the UPC; while Italy has,
having wavered, agreed to sign up to both the new UP and the
UPC.12 Croatia, an EU member state as of 2013, did not join until
after the above agreements/regulations had already been signed/
passed. At the time of writing, Croatia had not yet decided whether
to participate in the UPC or the UP.
This third chapter goes on to analyse the background of the
EU-driven patent reform package, including the questions of why
reforms were thought necessary and why these particular reforms
(UPC, UP) were chosen. The key legal aspects of the UPC and the
UP are then discussed.
The UPC is examined with regards to the court’s key institutional
architecture: its sources of law; its jurisdiction; the substantive law
to be utilized by the court; the UPC’s relationship with the Court of
Justice of the European Union; issues of standing and legal
representation; the court‘s structure and competence; the practical-
ities and procedures of filing a UPC case; the way bifurcation is
likely to operate within the UPC; the process of making appeals;
the availability of the opt-out from the UPC’s jurisdiction; the
UPC’s enforcement powers; the make-up of its judiciary; and,
finally, the transitional period that will see national courts and the
UPC share jurisdiction for at least 7 years. Throughout the chapter,
reference is made to the UPC Rules of Procedure, where relevant.
The fees for using the UPC are also discussed in this part of the
chapter and are further outlined in the conclusion of this book.
Regarding the UP, this chapter explores its central features: the
processes of application and grant; its territorial scope; the conse-
quences of unitary effect; the property considerations involved in
holding a UP; translation requirements; and the various fees
involved, including the annual UP renewal fees. The third chapter
concludes with a summary of the most significant elements of the

11
UP Regulation and Translation Regulation.
12
See, generally, T. Cook, ‘The progress to date on the Unitary European
Patent and the Unified Patent Court for Europe’, Journal of Intellectual
Property Rights 18 (2013), 584.

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Introduction 7

UPC and the UP, with a view to the empirical study featured in
Chapter 4.
At this point of the book, a crucial question is posed: in light of
the underlying rationale for the reforms – the need to provide a
more efficient, cost-effective and harmonious litigation system –
what features of the new system will be particularly crucial to
achieving these aims? A number of potential positives and negatives
of the reforms are outlined here, including the impact of the
fees/costs of the new system (given the aim to reduce overall
litigation costs); the availability of centralized enforcement via the
grant of patent injunctions and revocations spanning 25 UPC
Signatory States (regarding the aim to create more legal harmony
and certainty); the possibility that forum shopping will occur within
the UPC and the associated risk of ‘patent troll’ litigation (given the
need for an efficient and fair litigation system); and, finally, the lack
of uniformity of patent enforcement across all 28 EU member states
(MS) (in light of the fact that Spain, Poland and Croatia are, as yet,
not parties to the UPC).
Chapter 4 – the penultimate chapter of this book – is framed
around a UK IPO-commissioned empirical study, carried out by the
author, that examines the perspectives of those within the business
and legal communities concerning the UPC and the UP.13 This
piece of research had the specific aim of discovering at a qualitative
level the answer to the following question: what are the most
important issues for the stakeholders who will potentially use the
new system?14 For instance, is it likely that inventors and busi-
nesses will seek patent protection via the new UP route, rather than
through the existing system of obtaining EPs or national patents? If
so, why (and if not, why not)? Moreover, is the proposed UPC
likely to prove to be a popular venue for companies/litigants? What
makes the UPC attractive to litigants (or unattractive, as the case
may be)? Are patentees likely to opt out of the UPC during the

13
This study was undertaken from January to May 2014 – see further L.
McDonagh, ‘Exploring perspectives of the Unified Patent Court and the
Unitary Patent within the business and legal communities’, A Report Commis-
sioned by the UK Intellectual Property Office (July 2014), available at www.
gov.uk/government/publications/exploring-perspectives-of-the-up-and-upc.
14
J. Pagenberg, ‘Unitary patent and Unified Court: what lies ahead?’,
Journal of Intellectual Property Law & Practice 8 (2013), 480.

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8 European patent litigation in the shadow of the UPC

transition period? What is the likely impact of the fact that the UPC
central divisions will be divided between three cities – Paris,
Munich and London? For instance, do those in the Pharma/
Chemicals sector favour the location of the proposed London-based
court?
Thus, following on from the examination of the reforms in
Chapter 3, Chapter 4 explores what the most important issues are
for those within the business and legal communities, i.e. the
potential users of the UPC and the UP. This chapter assesses a large
amount of empirical data gathered from interviews with 28 partici-
pants from the legal and business communities. The interview data
shows that stakeholders are carefully considering what the impact
of pan-25 EU MS injunctions and pan-25 EU MS revocations might
be; are cautiously assessing the legal costs of using the new system
viz. the current system; and are trying to evaluate whether the
existence of bifurcation at the UPC, the possibility of forum
shopping and the possible growth in ‘patent troll’ litigation are
causes for concern.
As detailed in Chapter 4, although this was a UK IPO-funded
study, in terms of its (anonymous) participants the survey’s remit
includes not only in-house counsel working at businesses based in
the UK, but also at businesses that operate internally and externally
to the wider EU, including companies based in Germany, the
United States, Canada and Japan. Interview participants were also
drawn from the legal community – primarily solicitors and patent
attorneys – working in both the UK and Germany, two important
EU and EPC member states with large, embedded patent litigation
systems – as examined in Chapter 2 – that will no doubt be affected
by the establishment of the UPC.
Then Chapter 5 – the conclusion of this book – takes the key
concerns identified by the empirical study and considers how both
the setting up of and the organization of the UPC and the UP have
moved on since 2014, looking further ahead to 2017 and beyond.
Several observations are made by the author with respect to the
remaining key concerns of those within the business and legal
communities about the UPC and the UP, including the establish-
ment and maintenance of a high quality judicial system across the
UPC, and the maintenance of appropriate fee levels for the UP and
the UPC. Additionally, it is considered how the seismic changes
brought about by the UPC and the UP may end up altering litigant

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Introduction 9

behaviours within Europe. Overall, taking into account empirical

data concerning both the current state of patent litigation in Europe
and the views of the potential users of the new system, this chapter
considers what European patent litigation is likely to look like in
the years following the coming into being of the UPC and the UP –
a perspective taken at this crucial time, with the new system
steadily emerging, but not yet fully in view.
The title of this book suggests that the UPC currently casts a
shadow over patenting in Europe; indeed, my concluding argument
is that it is likely this shadow will continue to be observable for
some time – for, with the arrival of the UPC and the UP, we have
surely come to the end of one phase of the European patent project,
and are at the beginning of another.
At time of writing, the UK’s membership of the EU is not certain
– much will depend on the outcome of the June 2016 referendum
on EU membership. If the UK remains an EU member state, then
the UPC and UP will proceed as planned. However, if the UK does
exit the EU, it will likely no longer be able to participate in the
UPC or UP; indeed, the UPC itself may need be to redesigned to
take account of a UK exit, given that the UK is currently expected
to host one of the UPC’s central divisions. Although this book is
written with the status quo in mind, i.e. with the expectation that
the UK will remain an EU member state and thus a participant in
the UPC, ultimately the analysis of European patent litigation
undertaken over the course of this book remains valuable even in
the case that the UK does not participate in the UPC, for it
highlights both the current state of patent litigation in the UK,
Germany, France and the Netherlands, and anticipates expected and
possible future reforms that will undoubtedly have an impact both
on the continued fragmentation of litigation at the national levels
and on the uniformity of patent jurisdiction at the UPC level.
Indeed, the long-term impact of the UPC is likely to be so
profound that whatever the new dawn looks like, it will be
substantially different from what came before. Thus, what I wish to
present with this book is an in-depth exploration of European patent
litigation in the context of the new court system – a work that sums
up the current state of European patent litigation while simul-
taneously looking ahead to upcoming and future reforms.

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2. European patent litigation under

the European Patent Convention
(EPC)
EUROPEAN PATENT LITIGATION: FROM THE EPC
TO THE UPC
The trend in Europe since the advent of the Treaty of Rome in 1957
has been towards legal harmonization within the European Union
(EU), something that is particularly evident in regulatory areas
where the law has a significant economic impact on the workings of
the single market, such as in the areas of free movement (of goods,
capital, services and people), competition and consumer protec-
tion.1 Yet, despite its economic importance, patenting in Europe has
stubbornly remained a fragmented and complex process, both in
application and in enforcement.2
One clear reason for the lack of harmony within the current
European patent system is the longstanding failure – despite many
attempts – of the EU to agree on a uniform, harmonized ‘Com-
munity Patent’ system, similar to that which has long existed within
the EU for Community trade marks (recently renamed EU trade

1
Treaty establishing the European Economic Community, Mar. 25, 1957,
298 U.N.T.S. 3 (Treaty of Rome). See also Consolidated version of the Treaty
on European Union OJ C115/13 (2008) and Consolidated version of the Treaty
of the Functioning of the European Union (TFEU) OJ C326/61 (2012),
available at http://eur-lex.europa.eu/legal-content/EN/TXT/?uri=celex:12012E/
TXT. Note also the reference to the protection of intellectual property in
Article 17 of the Charter of Fundamental Rights of the European Union OJ
C83/389 (2010).
2
D. Harhoff, ‘Economic cost-benefit analysis of a unified and integrated
European patent litigation system’, EU Final Report Tender No. MARKT/2008/
06/D (2009), 1, 31, available at http://ec.europa.eu/internal_market/indprop/
docs/patent/studies/litigation_system_en.pdfHarhoff.

10
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European patent litigation under the EPC 11

marks).3 Unlike in the area of trade mark law, for patents the
language issue has been a major stumbling block in negotiations.4
Despite this failure, in addition to the national patent systems of
each European country, a non-EU based, pan-European patent
system of a kind has actually existed since 1973 under the terms of
the European Patent Convention (EPC).5 Notably, however, because
the EPC is not an EU agreement it lacks the administrative and
judicial mechanisms – such as the EU Commission and the CJEU,
so commonly utilized in the fields of trade mark law and com-
petition law – that might bring harmony to European patent law.
Nonetheless, the EPC’s impact has been substantial, and under-
standing the way the EPC works remains the key to unlocking the
European patent system as it is currently designed.

European Patents: Application and Enforcement

Since the coming into force of the EPC, individuals or businesses

seeking to protect their inventions across Europe have had the
option of either (i) making – under national law – separate
applications to each national patent office for a national patent of
that territory – for example, a UK patent (GB), a French patent
(FR), a German patent (DE) or a Dutch patent (NL); or (ii) making
– via the EPC – a single application to the Munich-based European
Patent Office (EPO) for a European patent (EP),6 which in fact,

3
J. Pila, ‘The European patent: an old and vexing problem’, Inter-
national & Comparative Law Quarterly 62 (2013), 917, 917–921.
4
Hoffmann-Eitle, The EU Patents Package Handbook: A Practioner’s
Guide (Munich: Hoffmann-Eitle, 2014), 46.
5
Text of the European Patent Convention (EPC), of 5 October 1973, as
revised by the Act revising Article 63 EPC of 17 December 1991, and the Act
revising the EPC of 29 November 2000, available at http://documents.epo.
org/projects /babylon/eponet.nsf /0/00E0CD7FD461C0D5C1257C060050C376/
$File/EPC_15th_edition_2013.pdf. Interestingly, in Switzerland/Liechtenstein a
type of ‘supra-national’ EP has existed since the coming into force of the EPC
– a patent granted by, or validated by, the Swiss Patent Office is in legal force
in Liechtenstein as well.
6
At the EPO, the key patenting concepts, e.g. subject matter, novelty,
obviousness (inventive step), industrial character, are interpreted in line with
the EPC. Examining these subjects in detail is beyond the remit of this book –

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12 European patent litigation in the shadow of the UPC

once granted, amounts to a ‘bundle’ of national patents, one for

each EPC jurisdiction specified.7 The EPO patent application may
be prosecuted in any of the EPO’s official languages – English,
German or French.8
The first process – national applications – is costly and awkward
for patentees who seek wide protection since it requires separate
applications within each state; yet obtaining Europe-wide patent
protection via the second process – a single EPO application – also
often proves costly as the post-grant validation of an EP bundle is
typically subject to translation provisions – as well as in some
countries additional validation charges – which apply before the
EPO-granted patent can take effect in a specific territory or
territories.9
Moreover, an EPO bundle of patents for the same invention does
not necessarily offer uniform protection in each state. Crucially,
although the EP application process centres on a single application
to the EPO, the present system for patent enforcement is not
homogeneous across the EPC member states – infringement litiga-
tion concerning an EP currently takes place at the national level,
rather than at a centralized European one. Notably, under Articles 2
and 64 of the EPC the rights conferred by the respective national
‘segments’ of a bundle EP, and the infringement and validity
proceedings before the national courts, are governed by the law in
the respective jurisdictions in which the patent has been validated.

for a comprehensive assessment of patenting requirements, see J. Pila, The

Requirement for an Invention in Patent Law (Oxford: Oxford University Press,
2010).
7
EPO, How to Get a European Patent: Guide for applicants, available at
www.epo.org/applying/european/Guide-for-applicants.html.
8
See also The Agreement on the application of Article 65 of the
Convention on the Grant of European Patents agreed on 17 October 2000 (see
OJ EPO 549 (2001)) (hereafter known as the London Agreement), available at
http://documents.epo.org/projects/babylon/eponet.nsf/0/7FD20618D28E9FBFC
125743900678657/$File/London_Agreement.pdf.
9
See, generally, EPO, Patent Litigation in Europe: An overview of
national law and practice in the EPC contracting states (2013), available at
www.epo.org/learning-events/materials/litigation.html.

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European patent litigation under the EPC 13

Thus, litigation can proceed on a national basis in each EPC

jurisdiction where the patent has been validated.
With respect to infringement, this means that, for example, a
patentee who needs to enforce a patent in more than one territory
must pursue legal proceedings in several different national courts,
even if the relevant patents are essentially the same. Thus, one key
characteristic of the present European patent litigation system is
that patentees have a wide range of jurisdictional options regarding
where to file suit against alleged infringers.10 Often, patentees
choose to file a case against an alleged infringer in the place where
the infringing goods are manufactured, or in the country where the
main distribution occurs, so that a granted injunction will have
maximum effect on the infringer’s ability to make, distribute and
sell the infringing goods.11 It also may make sense to file against a
potential infringer in a large market for the goods in question, such

10
Regulation No. 1215/2012 of 12 December 2012 on jurisdiction and
the recognition and enforcement of judgments in civil and commercial matters
(recast) (hereafter known as Brussels I Regulation recast), OJ L 351 (2012),
available at http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:
2012:351:0001:0032:en:PDF which recast Council Regulation (EC) No.
44/2001 of 22 December 2000 on jurisdiction and the recognition and
enforcement of judgments in civil and commercial matters (Brussels I), OJ L
12 (2001) and the original Brussels Convention on Jurisdiction and the
Enforcement of Judgments in Civil and Commercial Matters of 27 September
1968 (Brussels Convention), OJ L 304 (1978). Meanwhile, the Convention of
Sept 16 1988 on jurisdiction and the enforcement of judgments in civil and
commercial matters (Lugano Convention), OJ L 319 (1988) covers non-EU MS
such as Iceland, Liechtenstein, Norway and Switzerland, and is also relevant to
Denmark, where it preceded the application of the Brussels I Regulation. If a
defendant is domiciled within a Brussels I Regulation MS, i.e. the vast
majority of EU MS, then its provisions will apply; if, however, the defendant is
domiciled within a MS of the Lugano Convention – including Denmark – then
its provisions apply (Article 54b LC and Article 68(2) Brussels I Regulation
recast).
11
T. Bouvet, ‘France’, in M.C. Elmer and C.G. Gramaenopoulos (eds),
Global Patent Litigation (Arlington, VA: Bloomberg BNA, 2014), 546–89,
588. See also A. Kur, ‘A farewell to crossborder injunctions? The ECJ
decisions GAT v LuK and Roche Nederland v Primus and Goldenber’,
International Review of Intellectual Property and Competition Law (IIC) 27
(2006), 844.

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14 European patent litigation in the shadow of the UPC

as one or more of the three largest EU markets: Germany, France

and the UK.12
Crucially, when litigation takes place in multiple arenas national
jurisprudential variances may have a significant impact on the
course of a legal dispute. The various national courts may differ in
their approaches to procedural issues (disclosure, preliminary
enforcement) as well as in regards to substantive matters, such as
the question of whether patent infringement has occurred.13 Simi-
larly, on the subject matter of validity, although the EPO gives
guidance to national courts on how validity-related concepts ought
to be applied, the national courts retain the ability under the EPC to
interpret the key concepts – subject matter, novelty, obviousness,
industrial character, etc. – as they see fit. National courts may issue
decisions that are, in general, effective and enforceable only within
their own national territories. Therefore, the fragmented nature of
the litigation system can lead to an inconsistency in decision
making between national courts – for example, even with the same
set of facts/parties, a patent found to have been infringed by a
defendant in one jurisdiction may not be found to have been
infringed in another jurisdiction; moreover, an EP invalidated by a
court in one national jurisdiction remains in force in other national
jurisdictions where it has been validated.14
Nonetheless, the EPO does retain the ultimate say on validity via
its post-grant opposition proceedings – not a process of litigation as
such, but rather an administrative procedure whereby other parties,
such as competitors, may challenge the validity of an EP. In theory,

12
T. Bouvet, ‘France’, in M.C. Elmer and C.G. Gramaenopoulos (eds),
Global Patent Litigation (Arlington, VA: Bloomberg BNA, 2014), 546–89,
588.
13
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 1–5.
14
See, for instance, the divergence between decisions concerning the
same patent in the UK (England and Wales) and the Netherlands in the case of
Novartis AG v Sun Pharmaceutical Industries BV [2013] EWCA Civ 1663 as
reported on the IPKat weblog – http://ipkitten.blogspot.co.uk/2015/01/dutch-
diverge-with-english-as-novartis.html. See also K. Cremers, M. Ernicke, D.
Harhoff, C. Helmers, G. Licht, L. McDonagh, et al. ‘Patent litigation in
Europe’, ZEW Discussion Paper No. 13-07 (2013), 1, 1–5.

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European patent litigation under the EPC 15

this should prevent serious inconsistency problems occurring con-

cerning the issue of patent validity, because the effect of an EPO
opposition finding is immediate in all relevant EPC territories (e.g.
an EPO decision that the EP is, in fact, invalid is effective in all
territories where the patent had previously been validated). How-
ever, an initial EPO opposition decision can be appealed to the EPO
Technical Board of Appeals, where it can take several years before
a final decision on validity is made.15
In the meantime, national litigation may still go ahead, meaning
that national litigation and EPO opposition proceedings can some-
times occur in parallel, leaving open the possibility of conflicting
rulings being issued at the national and EPO levels. In other words,
during this often lengthy interim period national courts around
Europe can issue findings concerning validity and infringement of a
patent that the EPO may later decide to invalidate. This highly
unfortunate and deeply unsatisfactory scenario sometimes involves
the successful national assertion of EPs that are actually invalid
(and, thus, should never have been granted in the first place).16
Thus, there are two potential scenarios where inconsistency can
occur: (i) courts in different national jurisdictions may make
inconsistent decisions concerning infringement and/or validity – for
example, a patent held to be valid and infringed in Germany may be
found invalid and not infringed in the UK; and (ii) a national court
may rule on validity (and, consequently, infringement) and the EPO
opposition finding may later contradict this decision – for example,
the UK may hold that a patent is valid, but the EPO may find that
it is in fact invalid.
This problem of inconsistency in decision making – including the
existence of duplicative, and even contradictory, patent enforcement
decisions across EU member states – is discussed further below in
the comparative analysis of the jurisdictions of the UK, Germany,
France and the Netherlands. For now it is simply necessary to note
a few key points about the current fragmented litigation system:
first, inconsistent national decision making concerning EPs creates
legal uncertainty and unnecessary complexities; second, EU intra-
Community trade is impacted because inconsistent legal decisions

15
See Article 99 EPC seq.
16
Unilin Beheer BV v Berry Floor NV [2007] EWCA Civ 364; [2007]
FSR 25, comments of Jacob LJ at para. 17.

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16 European patent litigation in the shadow of the UPC

between EU MS effectively fragment the single market (e.g. a

product covered by a competitor’s patent found valid in one MS but
invalid in another may be seized in one EU MS but marketed
legally in the other);17 and third, the existence of a splintered
European patent system often leads to (much) greater costs of
patenting and undertaking litigation compared to other economic
territories covering large markets, with the USA the primary case in
point.18
Dissatisfaction with the current costly and fragmented system is
longstanding, and negotiations for a unified system were ongoing
across Europe for 40 years.19 Eventually, on 19 February 2013 the
UK and 24 other countries signed an intergovernmental agreement
(the Agreement) to create a Unified Patent Court (UPC) – a new
specialist patents court common to participating states.20 The
Agreement is part of a package of measures designed to establish
and enforce unitary patent protection within Europe with the
ambition of unifying the European patent system as much as
possible.21

17
Sir David Kitchen, ‘Introductory Remarks: A Judicial Perspective’, in J.
Pila and C. Wadlow (eds), The Unitary EU Patent System (Oxford: Hart, 2015),
1–8.
18
B. van Pottelsberghe, Lost Property: The European patent system and
why it doesn’t work (Brussels: Bruegel Blueprint Series, 2009), available
at http://bruegel.org/wp-content/uploads/imported/publications/patents_BP_
050609.pdf.
19
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 1–3.
20
Agreement on a Unified Patent Court (UPC Agreement), OJ C 175/01
(2013), available at http://eur- http://eur-lex.europa.eu/LexUriServ/LexUri
Serv.do?uri=OJ:C:2013:175:0001:0040:EN:PDF.
21
Regulation (EU) No. 1257/2012 of the European Parliament and of the
Council of 17 December 2012 implementing enhanced cooperation in the area
of the creation of unitary patent protection (UP Regulation), OJ L 361/1 (2012)
and Council Regulation (EU) No. 1260/2012 of 17 December 2012 implement-
ing enhanced cooperation in the area of the creation of unitary patent
protection with regard to the applicable translation arrangements (Translation
Regulation) OJ L 361/89 (2012) – both documents available at http://ec.
europa.eu/internal_market/indprop/patent/documents/index_en.htm. For a fur-
ther explanation of the changes, see the EPO website – www.epo.org/law-
practice/unitary.html. See also R. Romandini and A. Klicznik, ‘The
territoriality principle and transnational use of patented inventions: the wider

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European patent litigation under the EPC 17

The major elements of the UPC/UP reforms are detailed in the

chapter which follows this one. However, before the effects of the
reforms can be assessed at an in-depth level it is first necessary to
undertake analysis of the current state of European patent litigation,
and in particular to analyse the key jurisdictions of the UK,
Germany, France and the Netherlands.

COMPARATIVE ANALYSIS OF THE

JURISDICTIONS OF THE UK, GERMANY, FRANCE
AND THE NETHERLANDS
As noted earlier, within the EPC system the EPO has the ultimate
competence to issue decisions with respect to the validity of EPs –
decisions that have immediate effect within all 38 contracting states
of the EPC. The usefulness of this, however, is undermined by the
fact that the primary EPO mechanism for evaluating the validity of
granted EPs – the patent opposition procedure – is currently marred
by delays, something which has resulted in a considerable backlog
as well as the potential for inconsistent European patent enforce-
ment decisions.
The specific problem of inconsistency of European decisions
concerning patent validity and infringement is difficult to analyse
without access to reliable pan-European patent litigation statistics.
Thankfully, over the past few years several authoritative studies
have been published in this regard.22 By making use of recently

reach of a unitary patent and the role of the CJEU’, International Review of
Intellectual Property and Competition Law (IIC) 44 (2013), 524; A. West, S.
Kusumakar and T. Powell, ‘Unitary Patents and the Unified Patent Court’,
Computer and Telecommunications Law Review 19 (2013), 105; and M.
Brandi-Dohrn, ‘Some critical observations on competence and procedure of the
Unified Patent Court’, International Review of Intellectual Property and
Competition Law (IIC) 43 (2012), 372.
22
The most prominent study is K. Cremers, M. Ernicke, D. Harhoff, C.
Helmers, G. Licht, L. McDonagh, et al. ‘Patent litigation in Europe’, ZEW
Discussion Paper No. 13-07 (2013), 1. See also the following country-specific
studies – P. Véron, ‘Patent infringement litigation in France’, Mitteilungen der
deutschen Patentanwälte 93 (2002), 386; C. Helmers and L. McDonagh,
‘Patent litigation in the UK: an empirical survey 2000–2008’, Journal of
Intellectual Property Law & Practice 8 (2013), 846; T. Bouvet, ‘France’, in

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18 European patent litigation in the shadow of the UPC

published data, the remainder of this chapter attempts to shed light

on the current state of European patent litigation by focusing
primarily on four legal jurisdictions – the UK, Germany, France and
the Netherlands.
The reasons for concentrating on these four jurisdictions are as
follows: first, they are acknowledged as the most prominent sites of
patent litigation in Europe;23 second, all four states have signed up
as full participants with respect to the UPC and the UP, and as such
will be directly affected by the jurisdiction of the new court; and
third, there is now a wealth of recent publications that analyse these
four jurisdictions and which provide reliable quantitative litigation
data – data that are, in general, not available for other European
jurisdictions.24

The United Kingdom (UK)

Assessing the applicable law and competent courts in the UK

The primary piece of UK patent legislation is the Patents Act 1977,
which brought the provisions of the EPC into national law.25
Regarding patent litigation in the UK, the first point to note is that
the UK is not a unified legal system – there are in fact three
separate legal/court systems in the UK: England and Wales, Scot-
land and Northern Ireland. Notably, the enforcement system of
England and Wales – based in London at the Patents Court (PHC)
and the Intellectual Property Enterprise Court (IPEC) – is, by an

M.C. Elmer and C.G. Gramaenopoulos (eds), Global Patent Litigation (Arling-
ton, VA: Bloomberg BNA, 2014), 546–89; and the European overview given in
N. Van Zeebroeck and S. Graham, ‘Comparing patent litigation across Europe:
a first look’, Stanford Technology Law Review 17 (2014), 655.
23
J. Radcliffe and M. Brown, European Patent Litigation Strategy
(Arlington, VA: Bloomberg BMA, 2014) 1, 2–3, available at www.bna.com/up
loadedFiles/Content/Web_Forms/Real_Magnet_Form/European_Patent_Litigation/
WIPR0813_whitepaper_eu-patent-lit.pdf.
24
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 1–4.
25
Patents Act 1977 (UK), available at www.ipo.gov.uk/patentsact
1977.pdf.

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European patent litigation under the EPC 19

overwhelming margin, the most important of the three UK juris-

dictions with respect to patent litigation, and for that reason it is the
only one discussed in detail here.26
The litigation procedures of the courts of England and Wales,
including the PHC and the IPEC, are guided by the Civil Procedure
Rules (CPR).27 Patent proprietors – including joint owners – have
automatic standing to bring infringement claims; meanwhile, exclu-
sive licensees also have standing to bring proceedings, but only
regarding alleged infringements which are within the scope of the
licence and which take place post-licence agreement.28
Of the two courts relevant to the analysis in this chapter, the
IPEC – a specialist court within the Chancery Division of the High
Court of Justice of England and Wales – generally deals with
low-value claims; while the PHC – also a specialist court of the
Chancery Division of the High Court (HC) of Justice of England
and Wales – hears cases of a higher value and complexity.29 At both
the IPEC and the PHC, each case is tried by a single judge who
possesses patent expertise.30 Where leave is granted, appeals are
made to the Court of Appeal (CA) (though appeals from the IPEC
can, in some circumstances, be heard at the PHC). The appeal is
decided by a three-person panel at the Court of Appeal (generally
not entirely composed of IP specialists, although usually containing
at least one such specialist). Where leave is given, a decision of the
CA can be challenged on a significant point of law at the UK
Supreme Court (SC) (formerly the House of Lords). SC patent
cases are quite rare with an average of less than one per calendar

26
C. Helmers, Y. Lefouili and L. McDonagh, ‘Examining Patent Cases at
the Patents Court and Intellectual Property Enterprise Court 2007–2013’, A
Report Commissioned by the UK Intellectual Property Office (March 2015), 1,
available at www.gov.uk/government/publications/examining-patent-cases-at-
the-patents-court-and-ipec-2007-2013.
27
Civil Procedure Rules 1998 (CPR) (SI 1998/3132), available at
www.legislation.gov.uk/uksi/1998/3132/contents/made.
28
Ss 60 and 67 Patents Act 1977 (UK).
29
G. Kamstra, ‘United Kingdom’, in Global Legal Group (eds), The
International Comparative Legal Guide to: Patents (4th edn, Global Legal
Group Ltd, 2014), 194–200, 194–5, available at www.twobirds.com/~/media/
PDFs /News /Articles /2013 /An%20update%20on%20Patents%20in%20the%20
United%20Kingdom.pdf.
30
R. Arnold, ‘Case management, judicial specialisation and intellectual
property litigation’, Civil Justice Quarterly 29 (2010), 478.

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20 European patent litigation in the shadow of the UPC

year.31 Issues of EU law – such as those concerning biotechnology

or supplementary protection certificates (SPCs) – may lead to a
reference being made by a UK court (typically the HC, CA or SC)
to the Court of Justice of the European Union (CJEU) under the
Article 267 TFEU procedure.32
With respect to the IPEC, from 2010 to 2013 the court was
subjected to a substantial reform process.33 Post-reform, there has
been a large increase in patent cases filed and heard at the IPEC,
with many large businesses and SMEs taking advantage of the
IPEC’s procedural rules to achieve a speedier, less costly outcome
than that which would occur at the PHC.34

Assessing the procedural structure and typical length of

proceedings in the UK
Every claim at the PHC or the IPEC begins with the issuance of a
claim form. Following the serving of the claim, an acknowledge-
ment of service and, subsequently, the defence will be filed.35 The

31
C. Helmers and L. McDonagh, ‘Patent litigation in the UK: an
empirical survey 2000–2008’, Journal of Intellectual Property Law & Practice
8 (2013), 846, 846–9. A recent example of SC patent case is Virgin Atlantic
Airways Ltd v Zodiac Seats UK Ltd (formerly known as Contour Aerospace
Ltd) [2013] UKSC 46.
32
Article 267 of the Consolidated version of the Treaty of the Function-
ing of the European Union (TFEU), OJ C326/61 (2012), available at http://eur-
lex.europa.eu/legal-content/EN/TXT/?uri=celex:12012E/TXT.
33
The IPEC was, until October 2013, known as the Patents County Court
(PCC) (even thought its remit included other IP rights). Before the onset of the
reforms in October 2010, patents were the least litigated right at the PCC, with
most cases involving other IP rights such as copyright or trade marks – see C.
Helmers, Y. Lefouili and L. McDonagh, ‘Evaluation of the reforms of the
Intellectual Property Enterprise Court 2010–2013’, A Report Commissioned by
the UK Intellectual Property Office (July 2015), 1, available at www.gov.uk/
government/news/independent-review-finds-ipec-reforms-have-improved-access-
to-justice.
34
C. Helmers, Y. Lefouili and L. McDonagh, ‘Examining Patent Cases at
the Patents Court and Intellectual Property Enterprise Court 2007–2013’, A
Report Commissioned by the UK Intellectual Property Office (March 2015), 1,
www.gov.uk/government/uploads/system/uploads/attachment_data/file/413693/
Examing_Patent_Cases_at_the_Patents_Court_and_IP_Enterprise_Court_2007-2
___.pdf.
35
CPR parts 7.2, 7.4 and 7.5.

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European patent litigation under the EPC 21

claimant then typically applies for a case management conference

(CMC) where the further progress of the action will be outlined.36
At both the PHC and the IPEC, patent infringement and revoca-
tion (invalidity) claims may be filed simultaneously at the same
court. This means that the PHC and the IPEC have jurisdiction to
determine issues concerning both the infringement of and validity
of the UK-validated segment of an EP as well as, of course, any
UK-granted patent (GB).37 In addition to the claims for infringe-
ment and/or invalidity of the patent, other common claims include
filing for a declaration of non-infringement and claiming ground-
less threats of infringement.38

Disclosure and evidence gathering With respect to the gathering

of evidence at the PHC level, there is a wide responsibility of
disclosure.39 At the CMC, the PHC judge can order the disclosure
of internal documents, the preparation of a detailed product or
process description, the inspection of factory premises (and of the
processes which occur there), the provision of samples or ingredi-
ents, and for experiments to be undertaken (to be repeated in the
presence of the other party).40 By contrast, there are strict limits
imposed by the IPEC judge at the CMC regarding the claims that
can be made, the availability of disclosure and the use of expert
evidence and testimony. In addition, at the IPEC CMC, if the
parties wish, the judge can offer an initial opinion as to where
he/she thinks the case is heading, something that tends to push
parties closer to a settlement position.41

36
CPR part 63, Practice Direction 5.3.
37
S 72 Patents Act 1977 (UK). The validity of a UK national patent (GB)
may also be challenged at the UK IPO, e.g. via its patent opinion service.
38
Ss 70 and 71 Patents Act 1977 (UK).
39
See CPR Part 63, Practice Direction 6.
40
J. Radcliffe and M. Brown, European Patent Litigation Strategy
(Arlington, VA: Bloomberg BMA, 2014), 1, 4–5. See also S. Thambisetty,
‘Patent litigation in the United Kingdom: solutions in search of a problem?’,
European Intellectual Property Review 32 (2010), 238, 239–46.
41
C. Helmers, Y. Lefouili and L. McDonagh, ‘Evaluation of the reforms
of the Intellectual Property Enterprise Court 2010–2013’, A Report Commis-
sioned by the UK Intellectual Property Office (July 2015) 1, 7–9, available
at www.gov.uk/government/news/independent-review-finds-ipec-reforms-have-
improved-access-to-justice.

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22 European patent litigation in the shadow of the UPC

The trial hearing At the PHC trial, barristers for both parties
outline their claims in detail, referring to evidence gathered via
disclosure, and making use of examination (and cross-examination)
of witnesses/experts, before final arguments are made. PHC trials
can vary considerably in length – from around two days to several
weeks, depending on case complexity and the amount of witnesses/
experts who must be cross-examined.42 The PHC judgment will
usually be handed down between two weeks and three months after
the trial has ended. Meanwhile, applications for summary judgment
can be made in circumstances where the claimant believes that
there is no realistic prospect of a reasonable defence being
mounted. Nevertheless, due to the complexities involved in patent
claims concerning the issues of validity and infringement, the
issuance of summary judgments is rare at the PHC.43
Unlike PHC hearings, which can be quite lengthy, the remit of
the IPEC as a venue for smaller-scale claims means that its trials
typically last for no more than 1–2 days.44 For this reason, complex
patent cases are not suitable to be heard at the IPEC – they belong
at the PHC (cases are occasionally transferred between the two
courts).45

Interim injunctions and post-trial enforcement While the IPEC and

the PHC have the power to grant interim injunctions – in order to
prevent a defendant from carrying out the (allegedly) infringing act
until a full hearing on the facts can be undertaken – in practice,

42
N. Beckett and J. Morton, ‘United Kingdom’, in N. Beckett and J.
Morton (eds), CMS International Patent Litigation Guide (CMS, 2013),
95–100, 96.
43
C. Helmers and L. McDonagh, ‘Patent litigation in the UK: an
empirical survey 2000–2008’, Journal of Intellectual Property Law & Practice
8 (2013), 846, 846–9. See also Freshfields Bruckhaus Deringer, A Guide to
Patent Litigation in Europe: England and Wales (Freshfields, 2011), 1, 10,
available at www.lexology.com/library/detail.aspx?g=6bd0f5bc-df2c-4578-
8102-02c6d3c9946f.
44
C. Helmers and L. McDonagh, ‘Patent litigation in the UK: an
empirical survey 2000–2008’, Journal of Intellectual Property Law & Practice
8 (2013), 846, 846–9.
45
C. Helmers, Y. Lefouili and L. McDonagh, ‘Examining Patent Cases at
the Patents Court and Intellectual Property Enterprise Court 2007–2013’, A
Report Commissioned by the UK Intellectual Property Office (March 2015) 1,
1–4.

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European patent litigation under the EPC 23

interim injunctions are rarely granted.46 One key reason for this is
the existence of the doctrine of ‘clearing the way’, whereby if a
company knows that there is a possibility that their upcoming
product may infringe a competitor’s patent, such potential infrin-
gers are encouraged to file a claim to ‘clear the way’ by seeking
either to revoke the competitor’s patent, or to gain a declaration that
their product does not infringe their competitor’s patent (a declar-
ation of non-infringement).47 If a competitor does not do this, it is
more likely that the PHC will grant a preliminary injunction
preventing the sale of the potentially infringing product on the
commencement of infringement proceedings.48 The existence of the
‘clear the way’ doctrine is one of the reasons for the relatively high
proportion of revocation actions filed as initial claims at the IPEC
and the PHC when compared to the relevant courts in Germany,
France and the Netherlands (something that is highlighted further
below in the comparative summary of the four jurisdictions). At the
PHC, in the rare circumstance where an interim injunction is
granted, a cross-undertaking will typically be made so that the
defendant can later get compensation from the claimant if it is held
that the preliminary injunction ought not to have been granted after
all.49
With respect to enforcement post-PHC judgment on the merits –
which usually comes several weeks after the trial has ended – a

46
N. Beckett and J. Morton, ‘United Kingdom’, in N. Beckett and J.
Morton (eds), CMS International Patent Litigation Guide (CMS, 2013),
95–100, 99, noting that it is possible for a PHC judge to expedite the trial
rather than grant an interim injunction.
47
SmithKline Beecham & Anor v Apotex Europe Ltd & Ors [2002]
EWHC 2556; [2003] EWCA (Civ) 137; Cephalon & Ors v Orchid & Anor
[2010] EWHC 2945 (Pat); Merck Sharp Dohme Corp v Teva Pharma BV
[2012] EWHC 627 (Pat).
48
C. Helmers and L. McDonagh, ‘Patent litigation in the UK: an
empirical survey 2000–2008’, Journal of Intellectual Property Law & Practice
8 (2013), 846, 846–9. See also consideration of interim patent injunctions in
Warner-Lambert Company, LLC v Actavis Group Ptc EHF & Others [2015]
EWHC 72 (Pat).
49
N. Beckett and J. Morton, ‘United Kingdom’, in N. Beckett and J.
Morton (eds), CMS International Patent Litigation Guide (CMS, 2013),
95–100, 99.

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24 European patent litigation in the shadow of the UPC

separate hearing takes place where the consequences of the judg-

ment are discussed.50 A permanent injunction is the typical remedy
sought by, and granted to, the claimant in an infringement case.51
Delivery or destruction of infringing items may also be sought.
With regard to damages (or accounts of profits), the court takes
various factors – such as lost profits and unfairly gained profits –
into account when compensating the successful claimant.52 At the
IPEC, there is a cap of £500,000 on damages; at the PHC, there is
no specific damages limit. However, since separate proceedings are
typically required to approximate damages awards, these issues are
generally settled between the parties once substantive liability is
determined on the facts, and/or once a final injunction has been
handed down, as this is usually the primary remedy sought in a
patent case.53
One final thing is worth noting concerning enforcement – it is
possible for the PHC to grant a cross-border injunction but only in
very limited circumstances. Such an injunction may be granted at
the PHC where the validity of the EP is not in question in any of
the relevant EPC jurisdictions, such as France, Germany and the
Netherlands.54

The relationship between EPO opposition decisions and UK

enforcement The question of whether EPO opposition proceed-
ings are pending at the time of a PHC or an IPEC hearing will not
necessarily affect the UK court’s willingness to hear validity
challenges. In practice, this means that the PHC and the IPEC can
issue rulings, which are then operative and binding within the UK,
concerning the validity (or invalidity) of an EP, even while EPO
proceedings are ongoing. Nonetheless, as an alternative to issuing a

50
S 62 Patents Act 1977 (UK).
51
C. Helmers, Y. Lefouili and L. McDonagh, ‘Evaluation of the reforms
of the Intellectual Property Enterprise Court 2010–2013’, A Report Commis-
sioned by the UK Intellectual Property Office (July 2015) 1, 7–10.
52
N. Beckett and J. Morton, ‘United Kingdom’, in N. Beckett and J.
Morton (eds), CMS International Patent Litigation Guide (CMS, 2013),
95–100, 99.
53
Freshfields Bruckhaus Deringer, A Guide to Patent Litigation in
Europe: England and Wales (Freshfields, 2011), 1, 2, available at www.
lexology.com/library/detail.aspx?g=6bd0f5bc-df2c-4578-8102-02c6d3c9946f.
54
Actavis Group HF v Eli Lilly & Co [2012] EWHC 3316 (Pat).

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European patent litigation under the EPC 25

decision on validity, both the PHC and the IPEC have the option to
stay the proceedings until the EPO has come to a final decision
regarding ongoing opposition proceedings concerning the EP as
granted.55 For the most part, however, the PHC rarely grants such
stays – though it is worth noting that a recent decision of the UK
Supreme Court has led the lower courts to partially revise this
policy in favour of granting a stay in certain circumstances.56
It is worth noting that problems sometimes arise in the UK as a
result of EPO opposition delays. For example, in Unilin Beheer v
Berry Floor and Virgin v Zodiac the UK courts had to grapple with
the aftermath of a situation where in Unilin Beheer the precursor
court to the IPEC – the Patents County Court (PCC) – and in Virgin
the PHC – and subsequently, the CA – held EPs to be valid and
infringed; yet later – at the end of opposition proceedings – the
EPO retrospectively amended the EPs, limiting their claims to the
extent that infringement could no longer be said to have taken
place.57 In Unilin Beheer, the defendant – the alleged infringer of
the now amended patent – argued that the damages should not be
payable in light of the ongoing EPO proceedings; however, the UK
CA held that under the doctrine of res judicta the defendant must
pay the damages that arose from the original UK decision (notwith-
standing the EPO proceedings).58 As noted earlier, this kind of
inconsistency is highly problematic and can lead to clear cases of
injustice. However, some comfort for defendants came in the later
UK SC case of Virgin v Zodiac, where it was held that the

55
Mewburn Ellis, ‘Stays of UK patent litigation proceedings pending the
outcome of EPO opposition proceedings’ (2014), available at http://mewburn.
com/zh-hans/stays-of-uk-patent-litigation-proceedings-pending-the-outcome-of
-epo-opposition-proceedings/.
56
Virgin Atlantic Airways Ltd v Zodiac Seats UK Ltd (formerly known as
Contour Aerospace Ltd) [2013] UKSC 46; [2013] 3 WLR 299.
57
Unilin Beheer BV v Berry Floor NV [2007] EWCA Civ 364; [2007]
FSR 25, comments of Jacob LJ at para. 17; Virgin Atlantic Airways Ltd v
Zodiac Seats UK Ltd [2013] UKSC 46; [2013] 3 WLR 299.
58
Unilin Beheer BV v Berry Floor NV [2007] EWCA Civ 364; [2007]
FSR 25, comments of Jacob LJ at para. 17. See also Glaxo Group Ltd v
Genentech Inc & Anor [2008] EWCA Civ 23; [2008] Bus LR 888.

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26 European patent litigation in the shadow of the UPC

defendant could rely on the EPO’s amendment of the patent in

answer to Virgin’s claim for damages.59

Length of proceedings Recently published data suggest that cases

at the PHC take, on average, slightly less than a year to reach a
first-instance decision.60 However, depending on the nature of the
proceedings, the time spent gathering evidence and the number of
applications filed, in some cases it can take longer, even up to 18
months, before a first-instance decision is reached.61 As noted
earlier, cases are decided much more quickly at the IPEC, but this
venue is only suitable for straightforward, non-complex patent
cases.

The award of costs in the UK

Until very recently, the court fees at the IPEC and the PHC were set
at a very low level when compared with other European juris-
dictions such as Germany. However, in spring 2015 civil court
claim fees – including fees for IP cases – were increased substan-
tially by the UK government.62 For the IPEC and the PHC, there is
now a value-based fee system – for claims in the range of
£10,000–200,000 a fee of 5% of the value is payable, and for
claims above £200,000 a fee of £10,000 is payable.63
Nonetheless, even taking into account the new higher fee level, it
is the private legal costs of taking a patent case through to a full
PHC trial that make the PHC an expensive litigation venue: these

59
Virgin Atlantic Airways Ltd v Zodiac Seats UK Ltd [2013] UKSC 46;
[2013] 3 WLR 299.
60
C. Helmers and L. McDonagh, ‘Patent litigation in the UK: an
empirical survey 2000–2008’, Journal of Intellectual Property Law & Practice
8 (2013), 846, 846–50.
61
N. Beckett and J. Morton, ‘United Kingdom’, in N. Beckett and J.
Morton (eds), CMS International Patent Litigation Guide (CMS, 2013),
95–100, 96, available at www.cmslegal.com/relatedsites/patentswithoutborders/
Documents/CMS-International-Patent-Litigation-Guide-2013.PDF. See also
Freshfields Bruckhaus Deringer, A Guide to Patent Litigation in Europe:
England and Wales (Freshfields, 2011), 1–19, 6, available at www.lexology.
com/library/detail.aspx?g=6bd0f5bc-df2c-4578-8102-02c6d3c9946f.
62
Civil Proceedings and Family Proceedings Fees (Amendment) Order
2015 (SI 2015/576).
63
The current list of fees is available at www.gov.uk/guidance/take-a-
case-to-the-intellectual-property-enterprise-court.

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European patent litigation under the EPC 27

costs can often amount to £1–1.5 million for each side.64 Moreover,
in complex cases costs at the PHC can reach £2–3 million per side,
and very occasionally even higher figures are spent by one side or
the other.65
The main reasons for the existence of high private legal costs at
the PHC are as follows: (i) complying with the PHC’s broad
disclosure requirement is often expensive for litigants; (ii) the
carrying out of experiments and inspections often proves costly;
(iii) for PHC cases, it is virtually always necessary to hire both
solicitors and barristers in assembling a legal team, which adds to
the expense; and (iv) the trial hearings tend to be lengthy, largely
because they include the cross-examination of expert witnesses by
barristers, which can prove costly.
With respect to the award of costs post-trial, the system of costs
allocation in the UK is known as ‘loser pays’, i.e. ‘fee shifting’.
This system differs substantially from the system in the USA,
where parties in patent cases pay their own costs unless there are
exceptional circumstances.66 In practice, what ‘loser pays’ means is
that the party who loses a PHC case must pay not only its own
costs, but also the costs of the other side.
The reality at the PHC is a little more complicated: typically the
‘losing party’ will not have to pay the entire costs of the other side
on a blanket basis – instead, the allocation of costs is determined by
the judge on an issue-by-issue approach. In other words, the
number of grounds and issues claimed and argued at trial are
considered with respect to how much of the court’s time each issue
took to resolve, and in which party’s favour each issue was decided.
The judge then allocates the costs to each side on a proportionate

64
L. McDonagh and C. Helmers, ‘Patent litigation in England and Wales
and the issue-based approach to costs’, Civil Justice Quarterly 32 (2013) 369,
384.
65
L. McDonagh and C. Helmers, ‘Patent litigation in England and Wales
and the issue-based approach to costs’, Civil Justice Quarterly 32 (2013) 369,
384.
66
C. Helmers, B. Love and L. McDonagh, ‘Is there a patent troll problem
in the UK?’, Fordham Intellectual Property, Media and Entertainment Law
Journal 24 (2014), 509, 509–11.

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28 European patent litigation in the shadow of the UPC

basis (also taking into account the overall reasonableness of each

party’s overall costs).67

Examining empirical research on patent litigation in the UK

As noted by the UK Strategic Advisory Board for Intellectual
Property (SABIP) in 2009, the available empirical evidence on
patent litigation in the UK was, up until recently, fairly limited.68
Since 2009, however, the amount and quality of patent litigation
data has increased considerably, largely due to work done by legal
researchers and academics.
In 2010, Moss et al. examined the outcomes of 47 validity and
infringement cases heard between January 2008 and August 2009
by the Patents County Court (PCC) (the precursor to the IPEC), the
PHC, the Court of Appeal (CA) and the House of Lords (now the
UK Supreme Court). The Moss et al. data show that the patentee
won – in the sense that the patent was held to be valid and/or
infringed – in only 18 out of these 47 cases (a 38% success rate).69
In 2013, the most comprehensive quantitative survey yet under-
taken of UK patent litigation was published.70 The study – under-
taken by Christian Helmers and the author – provides quantitative
data analysis of all patent cases filed at the PHC 2000–2008 for
which online records are available – a total of 256 cases, of which
125 resulted in a judgment. Data on appeals from cases filed during
that period heard at the CA and the House of Lords/Supreme Court
were also analysed.71 About 50% of these 256 patent cases were
filed at the PHC as infringement claims, while around 37% of filed

67
Research in Motion UK Ltd v Visto Corp [2008] EWHC 819 (Pat);
(2008) 31(5) I.P.D. 31033.
68
K. Weatherall, E. Webster and L. Bently, IP Enforcement in the UK and
Beyond: A Literature Review – SABIP Report Number EC001, SABIP (2009),
1, 5.
69
G. Moss, M. Jones and R. Lundie-Smith, ‘Just how “anti-patent” are
the UK courts?’, Journal of Intellectual Property Law & Practice 5 (2010),
148, 148–50.
70
C. Helmers and L. McDonagh, ‘Patent litigation in the UK: an
empirical survey 2000–2008’, Journal of Intellectual Property Law & Practice
8 (2013), 846.
71
C. Helmers and L. McDonagh, ‘Patent litigation in the UK: an
empirical survey 2000–2008’, Journal of Intellectual Property Law & Practice
8 (2013), 846.

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European patent litigation under the EPC 29

cases sought the revocation of a patent.72 Importantly, on the

subject of the 125 judgments out of the 256 cases filed in
2000–2008 for which some online records were available, the data
show that revocation was the most likely judicial outcome, regard-
less of the initial claim. In other words, even if the initial claim was
filed by the patentee for infringement, in most cases the patent was
nonetheless invalidated by the PHC, showing how seriously the
question of patent validity is taken at the venue.73 Meanwhile, 33%
of cases that were filed initially as infringement claims resulted in a
settlement.74
During this period, the majority of litigant companies were in the
chemical and pharmaceutical industries; and, consequently, the
majority of litigated patents in 2000–2008 were chemical and/or
pharmaceutical inventions. This demonstrates the UK’s reputation
as a centre of chemical, pharmaceutical and legal expertise.
In a 2014 companion paper, Helmers et al. examined litigation
involving so-called ‘patent trolls’, or non-practicing entities (NPEs),
at the PHC.75 Helmers et al. found that during 2000–2010 NPE
litigation was relatively uncommon in the UK when compared to
other jurisdictions such as the USA – in fact, only 11% of patent
cases filed during 2000–2010 involved a NPE, and a substantial
number of these cases occurred between the same parties. Further-
more, in most of these PHC cases, the NPEs did not initiate the
case by issuing an infringement claim; rather, it was more often the

72
In 61% of the infringement actions, the defendants filed a counterclaim
for revocation and in around 41% of revocation actions, the defendants filed a
counterclaim for infringement. Aside from the infringement and revocation
claims, other types of cases included ownership and licensing disputes – C.
Helmers and L. McDonagh, ‘Patent litigation in the UK: an empirical survey
2000–2008’, Journal of Intellectual Property Law & Practice 8 (2013), 846,
854–61.
73
C. Helmers and L. McDonagh, ‘Patent litigation in the UK: an
empirical survey 2000–2008’, Journal of Intellectual Property Law & Practice
8 (2013), 846, 854–61.
74
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 47.
75
C. Helmers, B. Love and L. McDonagh, ‘Is there a patent troll problem
in the UK?’, Fordham Intellectual Property, Media and Entertainment Law
Journal 24 (2014), 509, 509–11.

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30 European patent litigation in the shadow of the UPC

case that manufacturers sought to ‘clear the way’ of the NPE-held

patent by filing a revocation case at the PHC.
The lack of UK NPE litigation makes sense when one considers
that the 2013 Helmers and McDonagh article shows that revocation
of the patent was by far the most likely outcome of a judgment for
cases filed in 2000–2008. In this vein, it seems logical that NPEs
would seek to avoid litigation at the PHC; while, on the other hand,
companies that are sued by NPEs in other jurisdictions may find it
advantageous to challenge the validity of the NPE patent at the
PHC,76 a point recently cited in the House of Commons.77
A more recent study, by Helmers, Lefouili and McDonagh, found
that a total of 445 patent cases were filed at the PHC during
2007–2013, whereas a total of 96 patent cases were filed at the
IPEC during the same 7-year period.78 This greater total reflects the
fact that the number of patent cases in the UK has increased
substantially over time, and particularly following the IPEC
reforms, which encouraged more patent claims at the venue. It also
reflects the fact that the authors of the later study had direct access
to the paper court files and, thus, had access to the complete range
of cases for the examined period. For 2007–2013, infringement was
the most common initial claim at both the PHC and the IPEC,
though revocation was a frequent claim at the PHC and a frequent
counterclaim at both courts. With respect to litigant-level data, the
2007–2013 data show that more SMEs (106) were involved in PHC
litigation than were involved in IPEC litigation (41) over the same
period, a fact which shows that despite the increasing popularity of

76
C. Helmers and L. McDonagh, ‘Patent litigation in the UK: an
empirical survey 2000–2008’, Journal of Intellectual Property Law & Practice
8 (2013), 846, at Table 12.
77
Reference was made in this debate to C. Helmers and L. McDonagh,
‘Trolls at the High Court?’, LSE Law, Society and Economy Working Paper No.
13 (2012), available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=
2154958. This discussion was reported in the UK Parliamentary record
(Hansard) on 20 March 2014, available at www.publications.parliament.uk/pa/
cm201314/cmhansrd/cm140320/text/140320w0002.htm#14032098000031.
78
C. Helmers, Y. Lefouili and L. McDonagh, ‘Examining Patent Cases at
the Patents Court and Intellectual Property Enterprise Court 2007–2013’,
A Report Commissioned by the UK Intellectual Property Office (March 2015),
1, available at www.gov.uk/government/publications/examining-patent-cases-
at-the-patents-court-and-ipec-2007-2013.

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European patent litigation under the EPC 31

the IPEC, a large proportion of litigant SMEs are familiar with the
PHC, something which may enter into their UPC preparations. A
very large number of the PHC patent cases – 372 – concerned an
EP, while at the IPEC 47 out of 96 patent cases centred on an EP. In
other words, EPs tend to be the subject of PHC litigation much
more frequently than GBs, but there is a more even split at the
IPEC.
One final thing is worth noting – recent data gathered by
Helmers, Lefouili and McDonagh show that in recent years – cases
filed in 2007–2013 – the PHC has begun to invalidate a slightly
lower proportion of patents than for cases filed during 2000–2008.79
If this trend continues, we may see the UK’s longstanding reputa-
tion as an ‘anti-patent’ jurisdiction change to one that is seen as
being more patent-friendly.80

Germany

Assessing the applicable law and competent courts in Germany

With respect to the procedural aspects of litigation in Germany,
patent issues are dealt with in the German Patent Code81 as well as
in the Law on International Patent Treaties.82 Meanwhile, matters of
legal practice and ligation are regulated in accordance with the
German Code for Civil Procedures (Zivilprozessordnung (ZPO)),83

79
Statistics on file with author – they were gathered during the process of
preparing C. Helmers, Y. Lefouili and L. McDonagh, ‘Evaluation of the
reforms of the Intellectual Property Enterprise Court 2010–2013’, A Report
Commissioned by the UK Intellectual Property Office (July 2015), 1.
80
G. Moss, M. Jones and R. Lundie-Smith, ‘Just how “anti-patent” are
the UK courts?’, Journal of Intellectual Property Law & Practice 5 (2010),
148, 148–50.
81
Patentgesetz (PatG) (German Patent Law) (as amended by the Law of
31 July 2009); English translation available at www.wipo.int/wipolex/en/
details.jsp?id=6128; see also T. Kühnen, Patent Litigation Proceedings in
Germany: A Handbook for Practitioners (6th edn, Cologne: Heymanns, 2013)
and P. Mes, Kommentar: Patentgesetz, Gebrauchsmustergesetz (4th edn,
Munich: Beck, 2015).
82
Gesetz über internationale Patentübereinkommen (IntPatÜG) (German
Civil Code); English translation available at www.gesetze-im-internet.de/
englisch_bgb/index.html.
83
Zivilprozessordnung (ZPO); English translation available at www.
gesetze-im-internet.de/englisch_zpo/index.html.

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32 European patent litigation in the shadow of the UPC

the Remuneration Code for Lawyers’ Costs (Rechtsanwalts-

vergütungsgesetz (RVG))84 and the German Code for Court Costs
(Gerichtskostengesetz).85 Patent proprietors – including joint own-
ers – have standing to initiate infringement proceedings, as do
exclusive licensees, and even non-exclusive licensees can have
standing where this is granted to them by the licensor.86
As with the UK, in addition to their jurisdiction to rule on
German national patents (DEs), in line with Article 2 and 64 of the
EPC, national courts in Germany also have the right to consider and
issue decisions in cases concerning the infringement and/or validity
of a German element of an EP.87 However, in a crucial distinction
with the UK, German courts do not deal with infringement and
validity via unified proceedings – for constitutional reasons, the
German legal system provides for bifurcation of infringement and
validity decisions, with separate courts deciding these issues, an
important feature of the German system that is explored further
below.88 It is also worth noting that, in addition to patent protection,
Germany provides a system of protection of ‘utility models’
(Gebrauchsmuster) in line with the German Utility Model Code –
a type of protection that is not available in the UK or the
Netherlands.89
With respect to infringement, there are a total of 12 regional
courts in Germany that feature chambers (Kammern) which are

84
Rechtsanwalts-vergütungsgesetz (RVG); English translation available at
www.gesetze-im-internet.de/englisch_rvg/englisch_rvg.html.
85
Gerichtskostengesetz (GKG); German version available at www.
gesetze-im-internet.de/bundesrecht/gkg_2004/gesamt.pdf and English transla-
tion partly available at www.gesetze-im-internet.de/Teilliste_translations.html.
86
G. Schoenen, M. Deck and M. Eck, ‘Germany’, in N. Beckett and J.
Morton (eds), CMS International Patent Litigation Guide (CMS, 2013), 45–50,
45, available at www.cmslegal.com/relatedsites/patentswithoutborders/
Documents/CMS-International-Patent-Litigation-Guide-2013.PDF.
87
H. Marshall, ‘The enforcement of patent rights in Germany’, Inter-
national Review of Intellectual Property and Competition Law (IIC) 31 (2000),
646, 646–9.
88
H. Marshall, ‘The enforcement of patent rights in Germany’, Inter-
national Review of Intellectual Property and Competition Law (IIC) 31 (2000),
646, 665. See also T. Kühnen, Patent Litigation Proceedings in Germany: A
Handbook for Practitioners (6th edn, Cologne: Heymanns, 2013).
89
Gebrauchsmustergesetz (GebrMG); English machine translation at
www.wipo.int/wipolex/en/details.jsp?id=10002.

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European patent litigation under the EPC 33

competent to hear patent and utility model infringement cases.90 It

is also possible to file for a declaration of non-infringement, as long
as patent infringement proceedings have not already been initi-
ated.91 The relevant courts are known as Landgerichte (LG). They
are located in the cities of Berlin, Braunschweig, Düsseldorf,
Erfurt, Frankfurt, Hamburg, Leipzig, Magdeburg, Mannheim,
Munich, Nuremberg-Fürth and Saarbrücken. Despite the existence
of 12 possible venues, the vast majority of German patent litigation
actually takes place at one of only three of these courts – Düssel-
dorf, Mannheim and Munich – where a panel of three judges sits
with the competence to hear patent cases.92 Questions of validity
are decided separately at the Bundespatentgericht (BPatG).93
German patent judges are known for their technical expertise.94
An appeal against an LG infringement decision may be heard by
one of the higher German regional courts – Oberlandesgericht
(OLG).95 Following this, a subsequent appeal can be brought before
the German Federal Court of Justice – Bundesgerichtshof (BGH).
Unlike appeals to one of the OLG – at which leave to appeal is not
required – leave to appeal is required for a subsequent appeal to the

90
H. Marshall, ‘The enforcement of patent rights in Germany’, Inter-
national Review of Intellectual Property and Competition Law (IIC) 31 (2000),
646, 665.
91
G. Schoenen, M. Deck and M. Eck, ‘Germany’, in N. Beckett and
J. Morton (eds), CMS International Patent Litigation Guide (CMS, 2013),
45–50, 46, available at www.cmslegal.com/relatedsites/patentswithoutborders/
Documents/CMS-International-Patent-Litigation-Guide-2013.PDF.
92
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 12, referring to §§ 253 ZPO seq.
93
G. Schoenen, M. Deck and M. Eck, ‘Germany’, in N. Beckett and J.
Morton (eds), CMS International Patent Litigation Guide (CMS, 2013), 45–50,
46. For DE national patents, validity opposition issues may also be decided by
the Deutsches Patent-und Markenamt (DPMA).
94
Taylor Wessing, Global Intellectual Property Index (2013), 1, 26,
available at http://united-kingdom.taylorwessing.com/ipindex/.
95
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 12, referring to §§ 511 ZPO seq.

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34 European patent litigation in the shadow of the UPC

BGH. Such leave can be granted by either the OLG or the BGH.96
Regarding validity, a BPatG decision can be appealed to the BGH.97

Assessing the procedural structure and typical length of

proceedings in Germany
Each infringement action in Germany begins with the filing, at one
of the courts (LG), of a complaint, setting out the details of the
alleged patent infringement, which is then served on the defendant.
As noted earlier, there are 12 competent courts (LG), with the vast
majority of claims being initiated at Düsseldorf, Mannheim and
Munich. Generally, a claimant may choose which court to file at.
Due to bifurcation, the courts (LG) with the jurisdiction to hear
patent infringement cases – most prominently, Düsseldorf, Man-
nheim and Munich – do not have the jurisdiction to rule that a
patent is either valid or invalid.98 Of course, if validity is not
questioned by the potential infringer then there is no issue of
bifurcation, as the case will be determined by the relevant LG
purely in relation to the infringement question.
Nevertheless, if the question of validity of the patent is raised as
a counterclaim (or as part of a defence filing to an infringement
claim), the validity issue must be decided at a different venue to the
LG, i.e. at the Deutsches Patent und Markenamt (DPMA) and/or
the Bundespatentgericht (BPatG).99 In such cases, a stay on the
patent infringement proceedings may be granted by the relevant LG
pending the outcome of the invalidity proceedings at the DPMA

96
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 13, referring to §§ 542 ZPO seq.
97
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 12.
98
H. Marshall, ‘The enforcement of patent rights in Germany’, Inter-
national Review of Intellectual Property and Competition Law (IIC) 31 (2000),
646, 665.
99
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 13, referring to § 148 ZPO.

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European patent litigation under the EPC 35

and/or the BPatG – but the LG does not have to grant the stay, and
if the LG considers there is no serious validity question, it is
unlikely a stay will be granted.100 This issue of bifurcation is
discussed in detail later on in this chapter.

Disclosure and evidence gathering Until relatively recently, it was

typically the case in Germany that only limited disclosure and
inspections were allowed by courts in patent proceedings.101
However, as a result of the coming into force of the EU
Enforcement Directive in 2008,102 it is now possible for German
courts to consider wide-ranging applications for disclosure and
inspection;103 moreover, such an application can be initiated prior to
– or in parallel with – the first-instance proceedings via a prelimin-
ary application, without the need to give prior notice to the
defendant.104

The trial hearing Concerning first-instance patent infringement

proceedings, the caseload dominance of Düsseldorf, Mannheim and
Munich means that it is worth considering these three courts in

100
Bardehle Pagenberg, Patent Infringement Proceedings (2013), 1, 9,
available at www.bardehle.com/fileadmin/contentdocuments/broschures/
Patent_Infringement_Proceedings.pdf.
101
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 14, referring to the fact that although § 142 ZPO and § 809
BGB allowed for inspections and the exchange of written evidence, the
German courts were ‘hesitant’ to apply these rules.
102
Directive 2004/48/EC of the European Parliament and of the Council
of 29 April 2004 on the enforcement of intellectual property rights, OJ L
195 (2004), available at http://ec.europa.eu/internal_market/iprenforcement/
directive/index_en.htm.
See also the German implementing law: Gesetz zur Verbesserung der
Durchsetzung der Rechte des Geistigen Eigentums, BGB part I dated 11 July
2008, 1119–211.
103
J. Radcliffe and M. Brown, European Patent Litigation Strategy
(Arlington, VA: Bloomberg BMA, 2014), 1–48, 3–4.
104
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 14, referring to § 140 c PatG and 24 c GebrMG.

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36 European patent litigation in the shadow of the UPC

detail.105 Interestingly, each one of these three courts provides a

different judicial model with respect to the timing of – and number
of – oral hearings, as well as in terms of how substantive and
procedural legal claims are dealt with.
Nonetheless, regardless of whether the claim is filed in Düssel-
dorf, Mannheim or Munich, the legal action proceeds on a mostly
written basis – rather than on an oral one like in the UK – with
legal matters requiring ‘substantiation’ (Substantiierungspflichten).
Prior to the oral hearing, arguments are submitted to the court and
exchanged between the parties, including the initial plea by the
claimant, the defendant’s filing of a defence, the counter-plea by the
claimant, and the defendant’s rejoinder. With respect to both written
and oral procedures, German patent lawyers are often assisted by
German patent attorneys.106 Unlike in the UK, in Germany the
hearing of expert opinions is rare and only acceptable in excep-
tional circumstances.107 The emphasis on written submissions
means that LG trial hearings typically last only 1–4 hours – a real
and substantial difference when compared to the lengthy oral
hearings found at the PHC in the UK.108
German judges are known for taking ‘a very active role in
structuring the hearing based on the written arguments filed by the
parties’.109 The presiding judge usually begins the trial by outlining
the court’s preliminary opinion on the infringement question based

105
J. Herr and M. Grunwald, ‘Speedy patent infringement proceedings in
Germany: pros and cons of the go-to courts’, Journal of Intellectual Property
Law & Practice 7 (2012), 44, 44–7.
106
G. Schoenen, M. Deck and M. Eck, ‘Germany’, in N. Beckett and J.
Morton (eds), CMS International Patent Litigation Guide (CMS, 2013), 45–50,
46, available at www.cmslegal.com/relatedsites/patentswithoutborders/
Documents/CMS-International-Patent-Litigation-Guide-2013.PDF.
107
G. Schoenen, M. Deck and M. Eck, ‘Germany’, in N. Beckett and J.
Morton (eds), CMS International Patent Litigation Guide (CMS, 2013), 45–50,
45.
108
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 14, referring to § 138 ZPO. See also generally T. Kühnen,
Patent Litigation Proceedings in Germany: A Handbook for Practitioners (6th
edn, Cologne: Heymanns, 2013).
109
G. Schoenen, M. Deck and M. Eck, ‘Germany’, in N. Beckett and J.
Morton (eds), CMS International Patent Litigation Guide (CMS, 2013), 45–50,
46.

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European patent litigation under the EPC 37

on the written submissions exchanged between the parties and

received by the court prior to the hearing.110 Following this, the rest
of the trial proceeds with the presiding judge directing specific
questions to each party’s lawyers regarding the key issues.

Interim injunctions and post-trial enforcement In Germany, appli-

cations for a preliminary injunction during an infringement case are
possible,111 but in practice the granting of such injunctions is
relatively rare due to the overall speed of the regular patent
infringement proceedings.112 Following a first-instance infringe-
ment decision, the patentee whose patent has been infringed must
start enforcement proceedings in order to, for example, obtain an
injunction with respect to the claims which succeeded in court.
Due to the system of bifurcation, a patent invalidity claim is
typically filed at the BPatG by a litigant who is already involved (as
a defendant) in separate but parallel patent infringement litigation at
one of the LG. Notably, the process for obtaining a judgment on the
validity question from the BPatG often takes much longer than it
does to obtain an infringement judgment from one of the LG.113
Crucially, for this reason, unless the LG agrees to grant a stay on
the infringement proceedings, a decision on infringement may be
granted by the LG before the BPatG issues a judgment concerning
validity. This leads us to an oft-made critical point about the
German system: if a later BPatG judgment invalidates a patent
which the prior LG already held was infringed, the bifurcated
proceedings result in the dreaded ‘invalid but infringed’ scenario.114

110
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 14.
111
Bardehle Pagenberg, Patent Infringement Proceedings (2013), 9, avail-
able at www.bardehle.com/fileadmin/contentdocuments/broschures/Patent_
Infringement_Proceedings.pdf.
112
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 15
113
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), at Table 18.
114
K. Cremers, F. Gaessler, D. Harhoff and C. Helmers, ‘Invalid but
infringed? An analysis of Germany’s bifurcated patent litigation system’, Max

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38 European patent litigation in the shadow of the UPC

On this point, it is worth stressing two things: first, the LG

typically only grants a stay pending an invalidity decision if – on
preliminary assessment – the LG believes that the challenge to the
patent’s validity at the BPatG is ‘predominantly likely’ to suc-
ceed;115 second, although this ‘invalid but infringed’ scenario can
lead to injustice, in practice the patentee typically has to offer a
security/indemnity in circumstances where an infringement decision
is granted while the invalidity question is still pending, something
which lessens the impact of – though does not entirely eliminate –
the ‘invalid but infringed’ problem.116
Thus, post-trial, the initiation of enforcement usually occurs via
the submission of a formal letter and a security – typically in the
form of a bank guarantee – to the court. Cremers et al. state:

In most cases the winner chooses to enforce only the claim for
rendering of accounts and waits with the enforcement of the injunction
until the validity has been confirmed or the judgement of the second
instance has been handed down. If the winning party enforces a first
instance judgment and the patent is later revoked, the patentee is liable
for the damages it has caused to the defendant.117

Planck Institute for Innovation & Competition Research Paper No. 14-14
(2014), 1, available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=
2504507.
115
G. Schoenen, M. Deck and M. Eck, ‘Germany’, in N. Beckett and J.
Morton (eds), CMS International Patent Litigation Guide (CMS, 2013), 45–50,
46. Generally, a less stringent standard is used by the OLG in the case of an
appeal – it is sufficient for the OLG to consider that the invalidity challenge is
likely to succeed for a stay to be granted. For further discussion of the German
litigation appeals process, see T. Kühnen, Patent Litigation Proceedings in
Germany: A Handbook for Practitioners (6th edn, Cologne: Heymanns, 2013).
116
This indemnity makes it possible for the defendant to recover damages
if a later/second-instance decision – by e.g. the BPatG – holds that the patent is
invalid and/or not infringed. No security is required with respect to the
second-instance decision. K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G.
Licht, L. McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion
Paper No. 13-07 (2013), 1, 14, referring to §§ 704, 708, 709 and 717 (2) ZPO.
117
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 14, referring to § 717 (2) ZPO.

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European patent litigation under the EPC 39

The amount of damages to be paid in award to the patentee by an

infringer is considered in a separate action subsequent to the
infringement decision.118

The relationship between EPO opposition and German enforcement

As with the UK, in Germany in addition to validity actions
undertaken at the national level an EP’s validity may be challenged
via the patent opposition proceedings at the EPO; and where the
same patent is the subject of both opposition proceedings and
German patent infringement proceedings, the LG has the power to
stay the German patent infringement proceedings pending the
outcome of the EPO opposition.119
Nonetheless, it is important to note that in Germany an invalidity
action at the BPatG – against either a DE or an EP – can only be
filed once the deadlines for filing an opposition against the DE or
EP have lapsed, and all relevant pending oppositions and/or appeals
against the granting of the patent have been terminated.120 In other
words, if EPO opposition proceedings are still pending, no German
patent validity challenge may be brought to the BPatG.121 Follow-
ing the BPatG decision on validity, an appeal can be brought before
the BGH.122

118
G. Schoenen, M. Deck and M. Eck, ‘Germany’, in N. Beckett and J.
Morton (eds), CMS International Patent Litigation Guide (CMS, 2013), 45–50,
48.
119
Regarding national patents, the validity of a German national patent
(DE) or utility model may be challenged by filing an opposition at the DPMA
– K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L. McDonagh, et
al. ‘Patent litigation in Europe’, ZEW Discussion Paper No. 13-07 (2013), 1,
12, referring to §§ 21 and 59 PatG seq, as well as § 25 GebrMG seq.
120
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 12, referring to §§ 65, 81 PatG seq. and Article II § 2
IntPatÜG.
121
G. Schoenen, M. Deck and M. Eck, ‘Germany’, in N. Beckett and J.
Morton (eds), CMS International Patent Litigation Guide (CMS, 2013), 45–50,
available at www.cmslegal.com/relatedsites/patentswithoutborders/Documents/
CMS-International-Patent-Litigation-Guide-2013.PDF.
122
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 12.

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40 European patent litigation in the shadow of the UPC

Length of proceedings Regarding length of infringement proceed-

ings, generally in Germany a first-instance action at one of the LG
proceeds quite quickly, with a first hearing scheduled within 6–12
months.123 For instance, in Düsseldorf – the most popular court
venue in Europe for patent infringement claims – the procedures
are highly streamlined, so that ‘proceedings from first filing to the
oral hearing take between eight to twelve months’, with oral
hearings typically lasting 1–2 hours in a single day.124 Moreover, a
decision on patent infringement is usually handed down 1–3
months after the hearing. However, the average duration of a
validity action in Germany, from filing to judgment at the BPatG, is
18 months.125

The award of costs in Germany

As with the UK – and unlike the USA – the German courts system
utilizes a ‘loser pays’ system of fee shifting. Moreover, in Germany
a value-based fee system is in operation – something which, as
noted above, until 2015 marked a crucial distinction between the
German and UK systems. Furthermore, the court fees in Germany
are typically higher, on average, than the fees in other jurisdictions
such as the UK, France and the Netherlands (though the UK fees
have recently been increased in line with the 2015 switch to a
value-based fee system).126 Taking into account the value of the

123
G. Schoenen, M. Deck and M. Eck, ‘Germany’, in N. Beckett and J.
Morton (eds), CMS International Patent Litigation Guide (CMS, 2013), 45–50,
46.
124
G. Schoenen, M. Deck and M. Eck, ‘Germany’, in N. Beckett and J.
Morton (eds), CMS International Patent Litigation Guide (CMS, 2013), 45–50,
46.
125
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), at Table 18.
126
C. Helmers, Y. Lefouili and L. McDonagh, ‘Evaluation of the reforms
of the Intellectual Property Enterprise Court 2010–2013’, A Report Commis-
sioned by the UK Intellectual Property Office (July 2015), 1. In Dusseldorf, the
use of per patent court fees differentiates this LG from Mannheim and Munich,
as well as from other European legal systems (in the UK, for instance, the
number of patents cited in a case filing has no impact on the overall court fee
– it is the value of the overall claim that affects the level of fee).

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European patent litigation under the EPC 41

dispute, German court fees often exceed €10,000, and can even
sometimes fall into a range of €100,000–200,000 in high-value
cases.127
The overall costs of taking a first-instance patent infringement
case in Germany have been estimated by Schoenen et al. as ranging
from ‘€40,000 in a simple case, to €100,000 in a more complex
case’; while in a very technical and/or highly valuable case the
costs may be ‘significantly more’ than this; with the costs of
appeals also potentially falling within this range, depending on case
complexity.128 This chimes with the Cremers study which states
that the private legal costs of patent litigation in Germany often
range ‘between €40,000 and €100,000 per party’.129
This is significantly less than the private fees in the UK, where
each side’s costs can easily reach £1 million. The reasons for this
include lack of a wide, pre-trial disclosure requirement in Germany,
coupled with the fact that German oral hearings are, by comparison
with the UK, very short, with less expert testimony and cross-
examination.
Overall, the value-based fee system used in Germany means that
both the court fees and the recoverable private legal fees are
calculated based on a formula centring on the dispute’s estimated
value, and following the judgment the value of the case is used as
the basis for the apportioning of costs between the winner and the
loser.130 Effectively, therefore, the presence of the value-based
system places limits on recoverable costs, meaning that the winning
party is unlikely to get back all of its legal costs. For this reason, it
can be said that in Germany the legal costs ‘often are not fully
shifted to the loser’; instead, the winner ends up with a portion

127
Bardehle Pagenberg, Patent Infringement Proceedings (2013), 12, avail-
able at www.bardehle.com/fileadmin/contentdocuments/broschures/Patent_
Infringement_Proceedings.pdf.
128
G. Schoenen, M. Deck and M. Eck, ‘Germany’, in N. Beckett and J.
Morton (eds), CMS International Patent Litigation Guide (CMS, 2013), 45–50,
47.
129
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 16.
130
Bardehle Pagenberg, Patent Infringement Proceedings (2013), 12, avail-
able at www.bardehle.com/fileadmin/contentdocuments/broschures/Patent_
Infringement_Proceedings.pdf.

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42 European patent litigation in the shadow of the UPC

determined by a calculation based on the value of the case and the

associated costs.131

Exploring empirical research on patent litigation in Germany

The exact overall amount of patent cases filed at the LG and OLG
each year is difficult to ascertain as these statistics officially go
unpublished. By contrast, summary statistics for the BPatG and the
BGH are made available on an annual basis.132 This means that it is
less easy to collect data on outcomes of patent infringement cases
at LG than it is for patent validity cases at the BPatG. As a result of
this, to a great extent what is known about German patent infringe-
ment cases comes from data-gathering projects carried out by
patent experts and academics.133
In 2007, Cremers published data gathered from court archives at
the IP chambers in Düsseldorf and Mannheim for cases filed in
1993–1995.134 Cremers’ data show that a total of 715 patent cases
were filed, referring to a total of 910 patents and/or utility models;
and by comparing the patents litigated in 1993–1995 to a control

131
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 16.
132
See BGH statistics, available at www.bundesgerichtshof.de/DE/BGH/
Statistik/statistik_node.html; see also BPatG statistics published in the journal
Blatt für Patent-, Muster- und Zeichenwesen – http://dpma.de/service/
veroeffentlichungen/blattfuerpmz/index.html.
133
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 6, noting that during the 1980s Stauder collected data on
German patent and utility model cases filed in 1971–1973, examining litigation
patterns, case outcomes and case duration, referring to D. Stauder, ‘Die
tatsächliche Bedeutung von Verletzungen- und Nichtigkeitsverfahren in der
Bundesrepublik Deutschland, Frankreich, Großbritannien und Italien: Ergeb-
nisse einer statistisch-empirischen Untersuchung’, GRUR: Gewerblicher
Rechtsschutz und Urheberrecht international (GRUR Int.) (1983), 233, 233–42
and D. Stauder, Patent- und Gebrauchsmusterverletzungsverfahren in der
Bundesrepublik Deutschland, Großbritannien, Frankreich und Italien
(Cologne: Heymanns, 1989).
134
K. Cremers, Incidence, Settlement and Resolution of Patent Litigation
Suits in Germany, doctoral dissertation, University of Mannheim (2007),
http://ub-madoc.bib.uni-mannheim.de/1405/1/Diss_cremers.pdf.

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European patent litigation under the EPC 43

sample of relevant non-litigated patents, Cremers shows that – as is

perhaps logical – it is the most valuable patents that are more
frequently litigated. Then, in a 2009 paper based on the same data
set, Cremers shows that the settlement rates can vary significantly
between the two regional courts – the most likely cause being the
variances in the interpretation of procedures between the LG in
Düsseldorf and Mannheim.135 Moreover, she notes that where an
invalidity case concerning the allegedly infringed patent is started
during the latter stages of the LG infringement action, the parties
are more likely to settle. Again, this seems logical from the
perspective of both parties given the additional costs and complex-
ity of pursuing an additional trial on validity. Interestingly, Cremers
also shows that if a patent survives an opposition challenge, this
increases the likelihood that there will be a settlement (in a case
featuring that patent), perhaps because it gives the patentee a strong
hand in negotiations.
In 2013, Kühnen and Claessen published a paper based on data
gathered from undertaking case counts at the LGs in Düsseldorf
and Mannheim for the period 2009–2011. Kühnen and Claessen’s
data demonstrate that the LG in Düsseldorf and Mannheim are
ranked 1 and 2 in terms of their importance to the overall volume of
patent litigation in Germany – almost 40% of all patent infringe-
ment cases in Germany in 2011 took place in one of these two
regional jurisdictions. Kühnen and Claessen suggest that 475 cases
were filed at the Düsseldorf court in 2011.136 This is a modest
increase (9%) in the caseload of prior years. Meanwhile, the
increase at the LG Mannheim for this period is more substantial
(27%).

135
K. Cremers, ‘Settlement during patent litigation trials: an empirical
analysis for Germany’, The Journal of Technology Transfer 34 (2009), 182,
182–7.
136
T. Kühnen and R. Claessen, ‘Die Durchsetzung von Patenten in der
EU’, Gewerblicher Rechtsschutz und Urheberrecht international (GRUR Int.)
(2013), 592, 593.

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44 European patent litigation in the shadow of the UPC

Finally, in the 2013 Cremers et al. study, a wide survey of

German patent litigation data was analysed.137 Due to the bi-
furcation system, Cremers et al. had to collect the data on infringe-
ment and revocation cases separately. The infringement case data
were collected from the paper court records at the LG in Düssel-
dorf, Mannheim and Munich, where the vast majority – an esti-
mated 80% – of patent litigation in Germany takes place. The
validity case data were collected from the available information
published by the BPatG and its appeal court, the BGH, as well as
from the German Patent and Trademark Office (DPMA), which
holds statistics on cases withdrawn quickly after filing. A total of
5,121 patent cases filed at the LG in Düsseldorf, Mannheim and
Munich were examined; as were 1,618 validity actions filed at the
BPatG. This brings the total number of examined patent cases –
including infringement and validity actions – for 2000–2008 to
6,739. This proves beyond any doubt that by far the greatest
proportion of patent litigation in Europe takes place in Germany,
with infringement being by far the most common claim and the
most likely outcome of a dispute that reaches a first-instance
decision. Of cases filed in Germany during 2000–2008 as infringe-
ment actions, 22% reached a judgment of infringement, a higher
proportion than in the UK and France; furthermore, a very high
proportion – 46.1% – of patent infringement cases settled.138
The Cremers et al. data set was then used in a 2014 paper by
Cremers, Gaessler, Harhoff, Helmers and Lefouili examining Ger-
man bifurcation, including the dreaded ‘invalid, but infringed’
scenario (where a patent is found to have been infringed, yet it is
later invalidated at the Federal level).139 Cremers et al. show that in
Germany the share of patents involved in an infringement suit that
are ultimately revoked by the BPatG is a mere 9.2%, reflecting to

137
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1.
138
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 47.
139
K. Cremers, F. Gaessler, D. Harhoff, C. Helmers and Y. Lefouili,
‘Invalid but infringed? An analysis of Germany’s bifurcated patent ligitation
system’, Max Planck Institute for Innovation & Competition Research Paper
No. 14-14 (2014), 1, 1–6.

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European patent litigation under the EPC 45

some extent the fact that only in around a third of infringement

cases filed in 2000–2008 did the defendant to a patent infringement
case file a revocation claim at the BPatG. Moreover, only a low
share of invalidity challenges are actually decided by the BPatG,
something that indicates that bifurcation may create an incentive for
the parties to settle patent disputes before the later validity hearing.
On the subject of settlements, a 2012 paper by Cremers and
Schliessler based on the same 2000–2008 data set notes that where
‘new information’ is revealed during trial, this also tends to prompt
settlements.140

France

Assessing the applicable law and competent courts in France

As with the UK and Germany, France is a party to the EPC.141 In
France, the EPC is enshrined in law by the French Intellectual
Property Code – Code de la propriété intellectuelle (CPI) – which
governs patent matters, including the French validations of EPs.142
With regard to litigation, the French Code of Civil Procedure (Code
de la procédure civile – CPC)143 and the Judicial Organisational
Code (Code de l’organisation judiciaire) set out the relevant
procedural rules for litigation in France.144
Patent proprietors – including joint owners – have standing to
initiate patent infringement claims and licensees are entitled to

140
K. Cremers and P. Schliessler, ‘Patent litigation settlement in Germany:
why parties settle during trial’, ZEW Discussion Paper No. 12-084 (2012), 1.
141
Text of the European Patent Convention (EPC), of 5 October 1973, as
revised by the Act revising Article 63 EPC of 17 December 1991, and the Act
revising the EPC of 29 November 2000, available at http://documents.epo.
org /projects/babylon/eponet.nsf/0/00E0CD7FD461C0D5C1257C060050C376/
$File/EPC_15th_edition_2013.pdf.
142
Code de la propriété intellectuelle (CPI) version consolidée au 8 août
2015 (French Code of intellectual property), available at http://legi
france.gouv.fr/affichCode.do?cidTexte=LEGITEXT000006069414&dateTexte=
20150920.
143
Code de la procédure civile (CPC) – English translation available
at www.legifrance.gouv.fr/Traductions/en-English/Legifrance-translations.
144
Code de l’organisation judiciaire – French version available at http://
legifrance.gouv.fr/affichCode.do?cidTexte=LEGITEXT000006071164 (English
translation not available).

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46 European patent litigation in the shadow of the UPC

participate where they have suffered a loss.145 Furthermore, unless

the specific licence states otherwise, beneficiaries of exclusive – or
even compulsory – licences can initiate proceedings where, having
notified the patent proprietor of the alleged infringement, the patent
proprietor has failed to file a claim.146
The Tribunal de Grande Instance (TGI), located in Paris, pos-
sesses the exclusive jurisdiction to hear all patent cases in
France.147 At the TGI there are four judicial panels that can hear IP
cases, with each panel comprising of three judges.148 Unlike in
Germany, there is no bifurcation of infringement and validity issues
– both infringement and invalidity are considered at the TGI. In
general, the TGI judges are not technical experts.149 Technical
evidence by experts can, however, be presented to the court, usually
in written form.150
A first-instance decision of the TGI can be appealed before the
Court of Appeal (Cour d’Appel – CdA) in Paris.151 The appeal
court consists of a panel of experienced judges with IP expertise
within Division 5 of the CdA in Paris. Appeals made with respect
to preliminary injunction rulings are heard by Division 1 of the
Paris CdA. However, where a preliminary injunction is granted by a

145
Article L 615-2 CPI.
146
J.-G. Moninand and S. Vilfeu, ‘France’, in N. Beckett and J. Morton
(eds), CMS International Patent Litigation Guide (CMS, 2013), 39–44, 39.
147
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 22, noting that this exclusive jurisdiction has existed since
2009, and referring to Articles L615-17 CPI and D211-6 COJ (decree dated 9
October 2009).
148
J.-G. Moninand and S. Vilfeu, ‘France’, in N. Beckett and J. Morton
(eds), CMS International Patent Litigation Guide (CMS, 2013), 39–44, 39.
149
J.-G. Moninand and S. Vilfeu, ‘France’, in N. Beckett and J. Morton
(eds), CMS International Patent Litigation Guide (CMS, 2013), 39–44, 40.
150
J.-G. Moninand and S. Vilfeu, ‘France’, in N. Beckett and J. Morton
(eds), CMS International Patent Litigation Guide (CMS, 2013), 39–44, 40,
referring to Article 282 of the French Code of Civil Procedure.
151
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 22, referring to Article R 211-1 COJ.

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European patent litigation under the EPC 47

judge in charge of a pending case on the merits, this cannot be

appealed before the judgment on the merits is issued.152
There is no need to seek leave to appeal, and making an appeal
usually suspends the enforceability of the first-instance decision,
pending the appeal outcome, unless – as often happens – the TGI
has ruled that the decision ought to be enforceable notwithstanding
an appeal.153 Finally, the decisions of a CdA can be appealed on an
exact issue of law to the Commercial Chamber (Chambre Commer-
ciale) of France’s Supreme Court – the Cour de Cassation (CC).154
Again, no leave is required. Like the UK and German courts,
French courts may refer questions to the CJEU in line with the
Article 267 procedure, though Bouvet notes that this is quite rare in
patent matters.155

Assessing the procedural structure and typical length of

proceedings in France
Both infringement and validity claims can be filed at the TGI.
However, as discussed further below with respect to empirical data,
it is known that patent infringement is by far the most common
initial claim for FRs and EPs; whereas, a patent invalidity challenge
is typically only raised as a counterclaim, or as a defence, to a prior
infringement claim.156 Thus, although it is possible in France to file

152
T. Bouvet, ‘France’, in M.C. Elmer and C.G. Gramaenopoulos (eds),
Global Patent Litigation (Arlington, VA: Bloomberg BNA, 2014), 546–89,
548.
153
T. Bouvet, ‘France’, in M.C. Elmer and C.G. Gramaenopoulos (eds),
Global Patent Litigation (Arlington, VA: Bloomberg BNA, 2014), 546–89,
548.
154
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 23, referring to Article L 111-2 COJ.
155
T. Bouvet, ‘France’, in M.C. Elmer and C.G. Gramaenopoulos (eds),
Global Patent Litigation (Arlington, VA: Bloomberg BNA, 2014), 546–89,
548.
156
P. Véron, ‘Patent infringement litigation in France’, Mitteilungen der
deutschen Patentanwälte 93 (2002), 386, 387 notes that in France there is an
important distinction between citing patent invalidity as a defence and making
a counterclaim for revocation: the counterclaim constitutes a claim of the
defendant and results, when it is admitted, in the revocation of the patent,
whereas the defence of patent invalidity results only in the dismissal of the
claim for infringement and the patent itself remains in force.

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48 European patent litigation in the shadow of the UPC

a standalone initial action alleging patent invalidity at the TGI –

rather than as a response to an infringement claim – in practice this
does not occur that often.157 If the patent is declared invalid by the
court, the effect is immediate within the jurisdiction.
In addition to filing initial claims for infringement or invalidity, it
is possible to seek a declaration of non-infringement from the TGI
via the following procedure: first, the owner of the relevant
patent(s) is invited by another party to provide an opinion as to
whether the relevant product/process constitutes an infringement;
then, if the other party disagrees with the patentee’s position, that
party can bring the case before the TGI, which can give an opinion
regarding the possibility of infringement – and the TGI can at this
stage issue a binding declaration of non-infringement.158

Disclosure and evidence gathering One of the key – and from the
point of view of patentees, most highly valued – elements of the
French patent litigation system is the possibility of making an
application for search and seizure of evidence (saisie contrefaçon),
a process which can even precede the full patent infringement case
filing at the TGI.159 The saisie rules are quite strict and unique to
France – the TGI president cannot refuse to give the authorization
for search and seizure if a legally granted patent, which is still in
force, is at issue in the case, although the TGI president has the
power to legally determine the extent of the search and seizure.160
In addition to providing evidence for French patent cases, the saisie
procedure is well regarded by patentees because evidence gathered

157
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 23, referring to Articles L613-25 and L614-12 CPI.
158
J.-G. Moninand and S. Vilfeu, ‘France’, in N. Beckett and J. Morton
(eds), CMS International Patent Litigation Guide (CMS, 2013), 39–44, 39.
159
Article L 615-5 CPI. See also P. Véron, ‘Patent infringement litigation
in France’, Mitteilungen der deutschen Patentanwälte 93 (2002), 386, 392.
160
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 23, referring to Article L 615-5 CPI, noting that the president
might grant the saisie with a considerably smaller scope than applied for by the
patentee.

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European patent litigation under the EPC 49

in France may be of relevance to parallel litigation between the

same parties in other jurisdictions.161
In practice, a bailiff (huissier de justice) – chosen by the plaintiff
– carries out the saisie (search and seizure) order, typically accom-
panied by a ‘person skilled in the art’ and/or any person whose
technical skills would be useful to the search – often the plaintiff’s
patent attorney (conseil en propriété industrielle).162 A police
officer is also present during the search, and in practical terms, the
bailiff, policeman and accompanying skilled person(s) have wide
powers: they are allowed to enter into the alleged infringer’s
premises to examine any allegedly infringing products, devices or
ongoing processes therein, as well as to obtain a number of
examples thereof, and/or to make copies of the relevant technical
and financial documents (even where such documents are marked
confidential).163
Of course, the fact that the saisie may take place before an actual
case filing against the alleged infringer means that without safe-
guards the process could be open to serious abuse. To try to avoid
this, there is a requirement on the prospective plaintiff/claimant to
serve a writ of summons on the alleged infringer within two weeks
of the carrying out of the order for saisie.164 It is the serving of the
writ of summons on the alleged infringer – setting out the plaintiff’s
claims – that is the beginning of the formal, substantive patent
infringement proceedings. If the plaintiff fails to serve the writ of
summons within the two-week period, the saisie will be declared
effectively invalid; and, crucially, the patentee may be held liable
for any damage or cost caused to the alleged infringer by the

161
J. Radcliffe and M. Brown, European Patent Litigation Strategy
(Arlington, VA: Bloomberg BNA, 2014), 1–48, 5. See also T. Bouvet, ‘France’,
in M.C. Elmer and C.G. Gramaenopoulos (eds), Global Patent Litigation
(Arlington, VA: Bloomberg BNA, 2014), 546–89, 588.
162
P. Véron, ‘Patent infringement litigation in France’, Mitteilungen der
deutschen Patentanwälte 93 (2002), 386, 393.
163
P. Véron, ‘Patent infringement litigation in France’, Mitteilungen der
deutschen Patentanwälte 93 (2002), 386, 393.
164
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 23–4.

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50 European patent litigation in the shadow of the UPC

carrying out of the saisie.165 The plaintiff must also have the writ
ascribed on the register of pending cases at the TGI office (placer
l’affaire).166

The trial hearing The substantive patent infringement case pro-

ceeds largely on the basis of a written, rather than an oral,
procedure. In French patent infringement cases, it is common for
three or four written pleadings to be exchanged between the parties
as the proceedings progress.167 Parties are allowed to conduct
experiments, and there is no need to obtain prior agreement from
the other party or from the court to do this.168 The exchange of
written pleadings is followed by an oral hearing at the TGI, heard
by the three-judge panel. Witness testimonies are usually recorded
in writing and submitted to the court in advance – meaning there is
very little oral testimony. Moreover, unlike in Germany, in patent
cases at the TGI the judges typically do not present a preliminary
opinion.169 The lawyers’ pleadings during this process typically take
between 1 and 3 hours, and only on very rare occasions do they
take up more than one day of the court’s time.170 In other words,
this ‘paper-based’ system is quite unlike that of the UK, and is
closer to the system found in Germany and the Netherlands.

Interim injunctions and post-trial enforcement Preliminary pro-

ceedings are also possible at the TGI. Proceedings for preliminary
injunctions are handled by the presiding judge of the relevant
judicial panel, or where a case is already pending, by the judge in

165
P. Véron, ‘Patent infringement litigation in France’, Mitteilungen der
deutschen Patentanwälte 93 (2002), 386, 393.
166
P. Véron, ‘Patent infringement litigation in France’, Mitteilungen der
deutschen Patentanwälte 93 (2002), 386, 394.
167
P. Véron, ‘Patent infringement litigation in France’, Mitteilungen der
deutschen Patentanwälte 93 (2002), 386, 397.
168
J.-G. Moninand and S. Vilfeu, ‘France’, in N. Beckett and J. Morton
(eds), CMS International Patent Litigation Guide (CMS, 2013), 39–44, 40.
169
P. Véron, ‘Patent infringement litigation in France’, Mitteilungen der
deutschen Patentanwälte 93 (2002), 386, 399.
170
J.-G. Moninand and S. Vilfeu, ‘France’, in N. Beckett and J. Morton
(eds), CMS International Patent Litigation Guide (CMS, 2013), 39–44, 40.

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European patent litigation under the EPC 51

charge of that case.171 Where infringement is an imminent risk or

already taking place, the patentee (or exclusive licensee/patent right
holder) can ask the President of the Court to grant a preliminary/
interlocutory injunction. This can be granted inter partes or on an
ex parte basis, but ex parte injunctions are only granted where
irreparable harm would otherwise be called to the patent right
holder (and can be later contested by the defendant).172 Where the
patent’s validity cannot seriously be challenged, the issuance of a
preliminary injunction is more likely. However, although following
the filing of an infringement claim it is possible for a preliminary
injunction to be granted by the president of the TGI, in practice
Cremers et al. note that such interlocutory injunctions are very
rarely granted.173
Remedies available include damages; a recall and/or destruction
of the infringing goods and publication of the infringement finding;
and, most crucially, an injunction. Following a judgment on the
merits of the case, the provisional enforcement of a decision –
for example, via the granting of an injunction – occurs where this
is requested by the winning party, so long as the court considers
this to be justified in the circumstances. Unlike in Germany, in
France it is not usually necessary for the party who has won the
substantive decision to provide a security/indemnity for its provi-
sional enforcement.174
Nonetheless, in the context of preliminary proceedings, a TGI
judge can make the provision of an indemnity by the plaintiff a
condition of the grant of a preliminary injunction, so that any

171
T. Bouvet, ‘France’, in M.C. Elmer and C.G. Gramaenopoulos (eds),
Global Patent Litigation (Arlington, VA: Bloomberg BNA, 2014), 546–89,
548.
172
J.-G. Moninand and S. Vilfeu, ‘France’, in N. Beckett and J. Morton
(eds), CMS International Patent Litigation Guide (CMS, 2013), 39–44, 42.
173
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 23, referring to L615-3 CPI and noting that according to P.
Véron, ‘Patent infringement litigation in France’, Mitteilungen der deutschen
Patentanwälte 93 (2002), 386, 386–403, less than five preliminary injunctions
are handed out each year compared to 300–500 infringement cases on the
merits.
174
P. Véron, ‘Patent infringement litigation in France’, Mitteilungen der
deutschen Patentanwälte 93 (2002), 386, 400.

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52 European patent litigation in the shadow of the UPC

potential losses felt by the defendant are recoverable if the infringe-

ment action is found to have no foundation.175 Similarly, rather than
granting the preliminary injunction to the plaintiff, the court may
instead require the defendant to provide an indemnity to the
plaintiff against possible damages suffered, if infringement is later
shown to have taken place.
Damages are usually calculated on the basis of loss of profit to
the patentee and/or benefit gained to the infringer.176 Materials
seized during the saisie procedure may be useful to the process of
calculating lost profits/infringer benefits, etc. After a decision on
the merits, an expert may be appointed to determine the appropriate
level of damages, with a further hearing taking place for the court
to evaluate the damages report.177

The relationship between EPO opposition and French enforcement

As with the UK and Germany, EPs can be challenged via the EPO
opposition service, while the validity of EPs (with French valida-
tions) can also be contested at the TGI.178 Like other EPC MS
courts, the TGI has discretion concerning whether to stay ongoing
French court proceedings pending parallel EPO opposition proceed-
ings; in practice, however, the TGI will do so only if the court
considers that there is a high likelihood of opposition success and if
it is in the overall balance of the parties’ interests.179

175
J.-G. Moninand and S. Vilfeu, ‘France’, in N. Beckett and J. Morton
(eds), CMS International Patent Litigation Guide (CMS, 2013), 39–44, 40.
176
J.-G. Moninand and S. Vilfeu, ‘France’, in N. Beckett and J. Morton
(eds), CMS International Patent Litigation Guide (CMS, 2013), 39–44, 41.
177
T. Bouvet, ‘France’, in M.C. Elmer and C.G. Gramaenopoulos (eds),
Global Patent Litigation (Arlington, VA: Bloomberg BNA, 2014), 546–89,
548.
178
Unlike in e.g. Germany there is no opposition procedure to challenge
French national patents (FRs) at the Institut National de la Propriété Indus-
trielle (INPI).
179
Hogan Lovells, Patent Litigation Guide: Jurisdictions (France) (2013),
1, 1, available at http://limegreenip.hoganlovells.com/patents/patentlitigation/
Pages/default.aspx.

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European patent litigation under the EPC 53

Length of proceedings The TGI usually makes its first-instance

decision within 4–6 weeks of the hearing.180 In total, it usually
takes 18–22 months from filing the writ of summons to the
first-instance decision, though in urgent cases ‘the president of
the Court may permit the plaintiff, upon his petition, to summon the
defendant to an earlier fixed date’.181

Assessing the award of costs and fee shifting in France

Unlike in the UK and Germany, there is no charge in France for the
administrative work of the court with respect to patent proceed-
ings.182 That, of course, does not mean that there is no overall cost
for taking proceedings in France. One estimate states that the
private legal costs arising from a patent case – from case filing to
full judgment – typically range between €50,000 and €200,000 per
party.183 Another estimate for the private legal costs of first-instance
proceedings gives a range of €40,000–150,000 per party, though it
is noted that the costs can potentially be higher in technical
cases.184 Regardless of the precise range, it is clear that the costs in
France are relatively low in comparison with the UK due to the
limited use of witnesses and experts, and the existence of relatively
short, largely paper-based, trials.185 The lack of court fees is also
notable, and contrasts with the high value-based fees in the UK and
Germany.

180
J.-G. Moninand and S. Vilfeu, ‘France’, in N. Beckett and J. Morton
(eds), CMS International Patent Litigation Guide (CMS, 2013), 39–44, 40. See
also P. Véron, ‘Patent infringement litigation in France’, Mitteilungen der
deutschen Patentanwälte 93 (2002), 386, 399.
181
J.-G. Moninand and S. Vilfeu, ‘France’, in N. Beckett and J. Morton
(eds), CMS International Patent Litigation Guide (CMS, 2013), 39–44, 40.
182
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 23, referring to Article L. 111-2 Code de l’organisation
judiciaire (COJ). See also P. Véron, ‘Patent infringement litigation in France’,
Mitteilungen der deutschen Patentanwälte 93 (2002), 386–403, 400.
183
B. van Pottelsberghe, Lost Property: The European patent system and
why it doesn’t work (Bruegel Blueprint Series, 2009), available at http://
bruegel.org/wp-content/uploads/imported/publications/patents_BP_050609.pdf.
184
J.-G. Moninand and S. Vilfeu, ‘France’, in N. Beckett and J. Morton
(eds), CMS International Patent Litigation Guide (CMS, 2013), 39–44, 41.
185
T. Bouvet, ‘France’, in M.C. Elmer and C.G. Gramaenopoulos (eds),
Global Patent Litigation (Arlington, VA: Bloomberg BNA, 2014), 546–89.

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54 European patent litigation in the shadow of the UPC

As with the UK and Germany, in France there is a system of fee

shifting from ‘loser’ to ‘winner’ – but in terms of the amount of
costs typically awarded, the awards tend to be much more limited
than the cost totals awarded in the UK and Germany.186 For
instance, Cremers et al. estimate that the total recoverable costs
awarded to the winning party by the French courts tend to be at
around the €3000–3500 level.187 Thus, the award rarely covers the
winning party’s full costs or even a large proportion; but the TGI
can sometimes award higher amounts to successful parties, includ-
ing costs within the range of €150,000–300,000.188 The costs of an
appeal are broadly the same as for the first-instance trial.

Exploring empirical data on patent litigation in France

A key study of French patent litigation was undertaken by the
experienced litigator Pierre Véron in 2001, whereby he examined
patent case data for cases undertaken during the period 1990–
1999.189 The data show that around half of all French patent cases
taken during 1990–1999 were heard by the TGI in Paris, showing
the dominance of the Paris court even before it gained exclusive
jurisdiction for patent cases in 2009. Furthermore, according to
Véron’s study 82% of the patent cases filed in Paris were infringe-
ment claims, with the remaining cases mainly relating to employee
inventions and breach of contract, illustrating that standalone valid-
ity challenges are very rare in France. Indeed, infringement pro-
ceedings in France are viewed as highly patentee-friendly.190
Véron’s data also show that, at least for French patent cases
undertaken during his survey period of 1990–1999, the vast major-
ity – almost three quarters – of patent litigants were local, i.e. based

186
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 25, referring to Articles 696 and 700 CPC.
187
P. Véron, ‘Patent infringement litigation in France’, Mitteilungen der
deutschen Patentanwälte 93 (2002), 386, 401.
188
J.-G. Moninand and S. Vilfeu, ‘France’, in N. Beckett and J. Morton
(eds), CMS International Patent Litigation Guide (CMS, 2013), 39–44, 41.
189
P. Véron, ‘Le contentieux des brevets d’invention en France Étude
statistique 1990–1999’ (2001), available at www.veron.com/publications/
Colloques/Le_contentieux_des_brevets_invention_1990_1999_en_couleurs.pdf.
190
Taylor Wessing, Global Intellectual Property Index (2013), 1, 29,
available at http://united-kingdom.taylorwessing.com/ipindex/.

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European patent litigation under the EPC 55

in France, with most of the remaining quarter based either in

Germany or the USA. Véron also demonstrates that the vast
majority of patents litigated in Paris at the TGI concern electronics
and technical instruments. This contrasts, for example, with Ger-
many, which features a large proportion of mechanical and engin-
eering patents; and the UK, where a large proportion of patent cases
involve pharmaceutical and chemical inventions.191
With respect to outcomes, Véron’s data show that in around half
of all patent cases heard during 1990–1999 the patent was held both
valid and infringed. Interestingly, revocation occurred only in 23%
of cases involving French national patents and in only 15% of cases
involving the French validation of an EP – a relatively low rate
when compared with the UK.
Véron’s study also demonstrated that the majority of damages
awards in cases taken in 1990–1999 fell below the €80,000 level.
Very occasionally, however, higher damage awards were handed
down in French patent cases, with some even rising above the
€1,000,000 level.
More recently, in 2010, Véron published a range of data for the
period between 2000 and 2009. In terms of case counts, on average
Véron found that for the period 2004–2009 335 patent cases were
filed per year across all courts in France (i.e. before 2009 when all
patent cases were moved to Paris).192
With respect to types of claims filed, in the more recent study
Véron found that, like the earlier period, during the later period a
very similar percentage – 81% to the earlier 82% – of all patent
claims filed were for infringement, showing a remarkable level of
consistency over time. The remaining 19% of claims included
invalidity claims or claims relating to employee inventions and
related ownership disputes with employers.
Looking closely at the data from the TGI in Paris – now the
exclusive court – Véron observed that infringement of a valid patent

191
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 3.
192
P. Véron, ‘Le contentieux des brevets d’invention en France Étude
statistique 2000–2009’ (2010) – available at http://www.veron.com/
publications/Colloques/Stats_contentieux_brevets_France_2000–2009_Veron_
et_Associes.pdf.

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56 European patent litigation in the shadow of the UPC

was judged to have occurred in 33% of all cases. For the same court
over the same period, in 40% of all cases even though the patent
was upheld as being valid, it was nonetheless held not to have been
infringed. Only in just over a quarter of all cases – 27% – was the
patent held to be invalid. As with the figures for 1990–1999, for
2000–2009 there was a higher probability that a French national
patent would be found invalid when compared to an EP (31% v
21%). Thus, it is evident from the most recent Véron study that
since the 1990s there has been an increase in invalidity findings, as
well as in decisions that found the patent valid though not
infringed. As with the UK, shifting trends across the realm of
judicial decision making may play a role in this change.
Thomas Bouvet states that in 2006–2011 only around 18% of
patent case filings resulted in a full decision on the merits.193 The
TGI in Paris issues rulings in an average of 80 patent cases per
year, and, according to Bouvet, more than 50% of first-instance
decisions (around 45 cases) are appealed to the CdA, with the CC
subsequently hearing around 20 patent cases per year.194 From 2006
to 2011, Bouvet notes that patentees had a win rate of 41% in
patent cases in France.195
The 2013 Cremers et al. study used data collected for cases filed
in 2000–2008 at the TGI in Paris. The data were collected by
Darts-IP. The data show a total of 1,002 patent cases at the TGI for
this period. The data demonstrate that patent infringement was the
most common initial claim for FRs and EPs; meanwhile, a patent
invalidity challenge was typically only raised as a counterclaim, or
as a defence, to a prior infringement claim; and on this point,
Cremers et al. note that more than 90% of validity challenges were
raised as a counterclaim/defence to an earlier infringement action

193
T. Bouvet, ‘France’, in M.C. Elmer and C.G. Gramaenopoulos (eds),
Global Patent Litigation (Arlington, VA: Bloomberg BNA, 2014), 546–89,
548.
194
T. Bouvet, ‘France’, in M.C. Elmer and C.G. Gramaenopoulos (eds),
Global Patent Litigation (Arlington, VA: Bloomberg BNA, 2014), 546–89,
549.
195
T. Bouvet, ‘France’, in M.C. Elmer and C.G. Gramaenopoulos (eds),
Global Patent Litigation (Arlington, VA: Bloomberg BNA, 2014), 546–89,
546.

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European patent litigation under the EPC 57

rather than as separate individual actions.196 Furthermore, 16.3% of

patent infringement cases filed in France were settled.
Overall, the comparative lack of standalone invalidity challenges
in France marks a clear distinction from the German system, where
validity actions must be filed separately. Furthermore, in the UK
initial validity challenges are common due in large part to the
doctrine of ‘clearing the way’. However, there is no French
equivalent of this doctrine; in fact, with regard to France, Bouvet
states that there is ‘no specific advantage to a possible infringer
taking the initiative of starting revocation proceedings or actions for
the declaration of non-infringement’.197 Nonetheless – as is the case
in other jurisdictions – challenging the validity of the patentee’s
patent(s) at the EPO via opposition proceedings remains a useful
strategy for potential infringers/competitors.

The Netherlands

Assessing the applicable law and competent courts in the

Netherlands
Like the UK, Germany and France, the Netherlands is a party to the
EPC. The Patent Act of 1995 (PA 1995) – Rijkswet van 15
december 1994, houdende regels met betrekking tot octrooien –
regulates Dutch patents, including national patents (NLs) and the
national validations of EPs, and sets out the options for filing
infringement cases and validity challenges before the Dutch
courts.198 Meanwhile, the Code of Civil Procedure – Wetboek van
Burgerlijke Rechtsvordering (Rv) – provides the procedural rules

196
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 23, referring to P. Véron, ‘Patent infringement litigation in
France’, Mitteilungen der deutschen Patentanwälte 93 (2002), 386, 387, who
estimates inter alia that only 5% of the actions are isolated actions.
197
T. Bouvet, ‘France’, in M.C. Elmer and C.G. Gramaenopoulos (eds),
Global Patent Litigation (Arlington, VA: Bloomberg BNA, 2014), 546, 589.
198
Rijkswet van 15 december 1994, houdende regels met betrekking
tot octrooien – Patent Act 1995 (Netherlands). An English translation is
available at: http://english.rvo.nl/sites/default/files/2013/12/ROW95_ENG_
niet_officiele_vertaling_0.pdf.

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58 European patent litigation in the shadow of the UPC

for civil litigation in the Netherlands.199 Patent proprietors have

standing to initiate patent infringement proceedings before the
Dutch courts; meanwhile, licensees can join these proprietor-led
proceedings, or they can even initiate proceedings themselves if this
right is included within the licence agreement.200
Notably, in the Netherlands the system of patent enforcement is
highly centralized; it is based at courts in The Hague which hold
exclusive jurisdiction to hear patent cases.201 Although the Nether-
lands shares some similarities with the German courts system –
primarily the front-loaded paper-based style of proceedings – it is
important to emphasize that in the Netherlands there is no German-
style bifurcation between the issues of validity and infringement –
these issues are considered by the same court. There are two
streams of patent proceedings – accelerated and regular.202
At The Hague, first-instance court filings are undertaken at the
District Court (Rechtbank) Civil Chamber, which hears patent
cases. Regarding patent case appeals, the Civil Chamber of the
Court of Appeals (Gerechtshof) has jurisdiction to hear challenges
to first-instance decisions. The judges at both the first instance and
the appeal level possess a great deal of technical and legal
expertise.203 In patent cases, it is also possible to file a final appeal
on a point of law at the Supreme Court of the Netherlands (Hoge
Raad).

199
Wetboek van Burgerlijke Rechtsvordering (Rv) – Code of Civil Proced-
ure. An English translation is available at www1.umn.edu/humanrts/research/
Civil%20Procedure%20Code%20(English).pdf
200
S 70 (1-6) Patents Act 1995 (Netherlands).
201
S 80 Patents Act 1995 (Netherlands). See also J. Brinkhoff, ‘The
enforcement of patent rights in the Netherlands’, International Review of
Intellectual Property and Competition Law (IIC) 31 (2000), 706, 707, noting
that prior to 1987 19 Dutch district courts had the ability to hear patent
infringement cases, but now The Hague is the sole venue.
202
W. Hoorneman, ‘The Netherlands’, in N. Beckett and J. Morton (eds),
CMS International Patent Litigation Guide (CMS, 2013), 61–6, 61–2.
203
Taylor Wessing, Global Intellectual Property Index (2013), 1, 26,
available at http://united-kingdom.taylorwessing.com/ipindex/.

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European patent litigation under the EPC 59

Assessing the procedural structure and typical length of

proceedings in the Netherlands
Interestingly, in the Netherlands there is no need for a court filing
to kick off legal action – it can be initiated via the serving of a writ
of summons upon the defendant, with the court merely being
informed of this having occurred at a subsequent date.204 In other
words, once the writ has been served, the defendant is considered to
have been put on notice that full litigation proceedings are pending/
forthcoming. The served writ must contain a statement of the
plaintiff’s case, indicating the evidence that the plaintiff seeks to
rely on. The defendant must then issue a statement detailing the
basis of the defence and the potential evidence relied on.205 A
counterclaim, for example, alleging invalidity of the patent may be
filed at this stage. Following this, the plaintiff may submit a
statement of defence to the defendant’s counterclaim.
In the Netherlands, if the first-instance claim is for infringement,
patent invalidity may be raised by the defendant either as a defence,
or as an invalidity counterclaim, to the infringement filing. Alter-
natively, the validity of a patent may be challenged in a ‘stand-
alone’ first-instance revocation claim.206 Regardless of how the
challenge is brought, the validity issue will be determined at the
same court as the infringement claim. It is also possible for a party
– for example, a competitor of the patentee – to seek a declaration
of non-infringement of the patent(s) from the District Court at The
Hague.207

Disclosure and evidence gathering In the Netherlands prior to

2007, it was the case that neither applications for UK-style broad
disclosure orders, nor actions seeking French-style saisie (search

204
W. Hoorneman, ‘The Netherlands’, in N. Beckett and J. Morton (eds),
CMS International Patent Litigation Guide (CMS, 2013), 61–6, 61.
205
W. Hoorneman, ‘The Netherlands’, in N. Beckett and J. Morton (eds),
CMS International Patent Litigation Guide (CMS, 2013), 61–6, 61.
206
W. Hoorneman, ‘The Netherlands’, in N. Beckett and J. Morton (eds),
CMS International Patent Litigation Guide (CMS, 2013), 61–6, 61.
207
W. Hoorneman, ‘The Netherlands’, in N. Beckett and J. Morton (eds),
CMS International Patent Litigation Guide (CMS, 2013), 61–6, 61.

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60 European patent litigation in the shadow of the UPC

and seizure) orders, were possible.208 However, although there is

still no specific disclosure requirement, since the implementation of
the EU Enforcement Directive in 2007 the Netherlands has pro-
vided for a new set of procedures aimed at enabling patentees to
secure evidence of possible patent infringement.209 To avail of these
procedures, the patentee is required to make a written request to the
Preliminary Relief Judge who usually conducts the proceedings on
an ex parte basis.210

The trial hearing As noted earlier, patent proceedings in the Neth-

erlands follow a largely paper-based litigation system, whereby the
claims and evidence are largely set out, pre-trial, in writs that are
filed at the court and passed between the various parties. In regular
proceedings – but not in accelerated proceedings – the parties may
be required by the court to appear, pre-trial hearing, in person, for a
less formal outline of the key issues, with the aim of reaching a
settlement.211 In accelerated proceedings, no filings after the initial
exchanges of writs/statements/defences by the parties are allowed.
During the trial hearing itself, limited oral arguments are typic-
ally heard from both sides. If necessary, an independent technical
expert may be appointed by the court to provide an opinion and the
presentation of experiment-based evidence is permissible.212 How-
ever, it is rare for Dutch courts to seek to rely on an independent
expert’s testimony.213 One reason for this is the high level of

208
J. Brinkhoff, ‘The enforcement of patent rights in the Netherlands’,
International Review of Intellectual Property and Competition Law (IIC) 31
(2000), 706, 716.
209
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 27, referring to Articles 1019(a)–1019(i) Rv.
210
O. Swens, ‘Patent litigation in the Netherlands and recent develop-
ments’, presentation delivered in Munich (February, 2011), slide 12, available
at www.vondst-law.com/v2/files/Recent%20developments%20in%20Dutch%
20patent%20law%20-%20February%202011.pdf.
211
W. Hoorneman, ‘The Netherlands’, in N. Beckett and J. Morton (eds),
CMS International Patent Litigation Guide (CMS, 2013), 61–6, 62.
212
W. Hoorneman, ‘The Netherlands’, in N. Beckett and J. Morton (eds),
CMS International Patent Litigation Guide (CMS, 2013), 61–6, 62.
213
W. Hoorneman, ‘The Netherlands’, in N. Beckett and J. Morton (eds),
CMS International Patent Litigation Guide (CMS, 2013), 61–6, 61–2.

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European patent litigation under the EPC 61

technical expertise that Dutch patent judges have.214 The official

language of the courts in The Hague is Dutch, and all filings must
be in Dutch. Nonetheless, written supporting evidence may add-
itionally be submitted in English, and exceptionally in German or
French.215

Interim injunctions and post-trial enforcement Within the legal

system of the Netherlands, preliminary relief proceedings (Kort-
Geding) are available if the court decides the urgency of the case
justifies it.216 In such proceedings, a writ of summons is served
upon the defendant by the plaintiff, requiring the defendant to
appear before the president of the court. This writ of summons
contains the primary claim as well as some details of its legal and
evidentiary basis. At the preliminary hearing, the plaintiff and the
defendant have the chance to provide oral arguments and the court’s
decision is made swiftly.217 Following the enactment of the EU
Enforcement Directive and its implementation in the Netherlands in
2007, it is possible for a Dutch court to grant an ex parte injunction,
but only in circumstances of urgency – for example, in a case
involving repeat infringers or involving distributers of goods where
manufacturers have already been shown to have infringed.218
During the late 1990s, a somewhat unique characteristic of patent
litigation in the Netherlands was the willingness of Dutch judges to
impose cross-border injunctions to prevent patent infringement in

214
Taylor Wessing, Global Intellectual Property Index (2013), 26, avail-
able at http://united-kingdom.taylorwessing.com/ipindex/.
215
W. Hoorneman, ‘The Netherlands’, in N. Beckett and J. Morton (eds),
CMS International Patent Litigation Guide (CMS, 2013), 61–6, 61–2.
216
W. Hoorneman, ‘The Netherlands’, in N. Beckett and J. Morton (eds),
CMS International Patent Litigation Guide (CMS, 2013), 61–6, 63–4.
217
J. Brinkhoff, ‘The enforcement of patent rights in the Netherlands’,
International Review of Intellectual Property and Competition Law (IIC) 31
(2000), 706, 709–11.
218
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 29.

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62 European patent litigation in the shadow of the UPC

the Netherlands and abroad.219 Cremers et al. note that the popular-
ity of the Dutch litigation system among patentees rose consider-
ably during the mid-to-late 1990s largely for this reason.220
Nonetheless, two decisions of the Court of Justice of the EU in
2006 placed limits on the issuance of such cross-border injunc-
tions.221 As a result of the CJEU rulings, today Dutch cross-border
injunctions are available only in preliminary relief proceedings and
only where the validity of the patent is not in dispute.222 Moreover,
an ex parte injunction may not be granted on a cross-border
basis.223
With respect to post-trial enforcement, following a finding of
infringement on the merits a final injunction will generally be
granted by the Dutch court against the infringer, and if the infringer
fails to abide by the injunction, a further fine can be ordered by the
court.224 In circumstances where an appeal has been launched by a
defendant, it is usually the case that the effect of the first-instance
decision is suspended. Despite this, a plaintiff can apply for a
declaration that the first-instance decision is provisionally enforce-
able.225 As a matter of course, the Dutch courts typically grant such

219
H. Bertrams, ‘The cross-border prohibitory injunction in Dutch patent
law’, International Review of Intellectual Property and Competition Law (IIC)
26 (1995), 618, 618–21.
220
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 28.
221
See Case C-539/03 Roche Nederland BV v Frederick Primus [2006]
ECR I-6569 and Case C-04/93 Gesellschaft für Antriebstechnik mbH & Co.
KG (GAT) v Lamellen und Kupplungsbau Beteiligungs KG (LuK) [2006] ECR
I-6523.
222
W. Hoorneman, ‘The Netherlands’, in N. Beckett and J. Morton (eds),
CMS International Patent Litigation Guide (CMS, 2013), 61–6, 65.
223
O. Swens, ‘Patent litigation in the Netherlands and recent develop-
ments’, presentation delivered in Munich (February, 2011), slides 8 and 9,
available at www.vondst-law.com/v2/files/Recent%20developments%20in%20
Dutch%20patent%20law%20-%20February%202011.pdf.
224
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 29, referring to Sec. 3 DPA; Sec. 296 Civil Code and Sec.
611a Rv.
225
W. Hoorneman, ‘The Netherlands’, in N. Beckett and J. Morton (eds),
CMS International Patent Litigation Guide (CMS, 2013), 61–6, 65.

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European patent litigation under the EPC 63

a request.226 Importantly, however, if provisional enforcement

takes place at the request of the plaintiff, and subsequently, the
case is overturned on appeal, the plaintiff is responsible for any
damage caused to the defendant resulting from the provisional
enforcement.227

The relationship between EPO oppositions and Dutch enforcement

If an EP with a Dutch validation is challenged at the EPO, it is
common for any Dutch proceedings concerning the validity of that
patent to be stayed pending the EPO opposition decision.228 None-
theless, the Dutch courts will normally not stay an infringement
action pending the outcome of EPO opposition proceedings.229 In
preliminary injunction proceedings, however, the court will assess
‘whether there is a serious, non-negligible chance, that the opposi-
tion will succeed and, if so, may deny the injunction’.230

Length of proceedings Regarding length of proceedings, it is rele-

vant whether the accelerated or regular proceedings are used.231
Cremers et al. estimate that in the Dutch accelerated proceedings a
decision on the merits is usually reached within 10–11 months of
filing, while in regular proceedings a decision on the merits is
typically issued within 16–20 months of filing, illustrating the much

226
J. Brinkhoff, ‘The enforcement of patent rights in the Netherlands’,
International Review of Intellectual Property and Competition Law (IIC) 31
(2000), 706, 721.
227
J. Brinkhoff, ‘The enforcement of patent rights in the Netherlands’,
International Review of Intellectual Property and Competition Law (IIC) 31
(2000), 706, 721.
228
S 83(3) Patents Act 1995 (The Netherlands). Like France, although EPs
with Dutch validations can be challenged via the EPO opposition procedures,
there is no comparative opposition procedure for Dutch national patents (NLs)
in the Netherlands.
229
O. Swens, ‘Patent litigation in the Netherlands and recent develop-
ments’, presentation delivered in Munich (February, 2011), slides 7, 8 and 9,
available at www.vondst-law.com/v2/files/Recent%20developments%20in%
20Dutch%20patent%20law%20-%20February%202011.pdf.
230
W. Hoorneman, ‘The Netherlands’, in N. Beckett and J. Morton (eds),
CMS International Patent Litigation Guide (CMS, 2013), 61–6, 65.
231
W. Hoorneman, ‘The Netherlands’, in N. Beckett and J. Morton (eds),
CMS International Patent Litigation Guide (CMS, 2013), 61–6, 61–2.

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64 European patent litigation in the shadow of the UPC

greater pace of the accelerated process.232 The reason for the

greater speed of the accelerated proceedings is straightforward: no
filings after the initial exchanges of writs/statements/defences by
the parties are allowed. By contrast, no such restrictions apply in
the context of the regular proceedings – in fact, as noted above, in
regular proceedings an interim order may be issued by the court,
requiring the parties to appear to, for example, provide additional
information, make oral case pleadings, discuss settlement possibil-
ities, or for other case management purposes.233

The award of costs in the Netherlands

For accelerated proceedings on the merits, costs can range from
€40,000 to €150,000 per side, while for normal proceedings the
costs typically range from €50,000 to €250,000 per side (and
potentially can go up to as much as €400,000–600,000 per side if
the case is a complex and large-scale one).234 The average cost of a
patent case in the Netherlands is between €60,000 and €200,000 per
side, with the majority of the costs accruing as a result of private
legal fees.235
Like the other European jurisdictions examined earlier, in the
Netherlands costs are usually shifted to the loser. Notably, prior to
2007 – when the EU Enforcement Directive was brought into Dutch
law – the Dutch courts typically only awarded a small amount of
the accrued costs to the winning side.236 Since 2007, however, the

232
O. Swens, ‘Patent litigation in the Netherlands and recent develop-
ments’, presentation delivered in Munich (February, 2011), slides 8 and 9,
available at www.vondst-law.com/v2/files/Recent%20developments%20in%
20Dutch%20patent%20law%20-%20February%202011.pdf.
233
W. Hoorneman, ‘The Netherlands’, in N. Beckett and J. Morton (eds),
CMS International Patent Litigation Guide (CMS, 2013), 61–6, 61–2.
234
W. Hoorneman, ‘The Netherlands’, in N. Beckett and J. Morton (eds),
CMS International Patent Litigation Guide (CMS, 2013), 61–6, 61–2. See also
G. Corcoran, ‘Review of Dutch patents case law’, CIPA Journal (July 2012),
41, available at www.cipa.org.uk/pages/Dutch-Patents-Case-Law-2012.
235
D. Harhoff, ‘Economic cost-benefit analysis of a unified and integrated
European patent litigation system’, EU Final Report Tender No. MARKT/2008/
06/D (2009), 1, 31, available at http://ec.europa.eu/internal_market/indprop/
docs/patent/studies/litigation_system_en.pdfHarhoff.
236
J. Brinkhoff, ‘The enforcement of patent rights in the Netherlands’,
International Review of Intellectual Property and Competition Law (IIC) 31
(2000), 706, 721.

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European patent litigation under the EPC 65

Dutch courts have been willing to award a much higher proportion

of costs to the winner.237 As Hoorneman states: ‘The successful
party can recover all reasonable and proportionate legal costs
(including legal fees and fees of certain experts) and other expenses
incurred, but a detailed specification of costs must be provided to
the court in good time.’238

Exploring the empirical data on patent litigation in the

Netherlands
The 2013 Cremers et al. study used data collected for cases filed in
2000–2008 at The Hague. The data were collected by Darts-IP. The
data show a total of 326 patent cases at The Hague for this period.
The Netherlands has a high rate of infringement – 36% of cases
filed as infringement actions resulted in a judgment of infringe-
ment.239 This percentage is even higher than the rate of infringe-
ment judgments in Germany (22%), though of course it must be
recalled that Germany features vastly more patent cases than the
Netherlands. The Cremers data also show that there is a very low
rate of settlement of cases in the Netherlands.240
In a 2014 paper, Van Zeebroeck and Graham utilized patent
litigation data, also gathered from Darts-IP, to examine European
patent litigation.241 In their study, Van Zeebroeck and Graham note
the existence of significant differences with respect to the amount

237
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 29, referring to § 1019h Rv and Danisco A/S v Novozymes
A/S, Court of Appeal (The Hague), 26 February 2013, Case no. 200.094.921/
01, Dutch version available at www.eplawpatentblog.com/eplaw/2013/03/
nl-danisco-v-novozymes-litigation-costs-post-bericap.html.
238
W. Hoorneman, ‘The Netherlands’, in N. Beckett and J. Morton (eds),
CMS International Patent Litigation Guide (CMS, 2013), 61–6, 61–2.
239
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 47.
240
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 47.
241
N. Van Zeebroeck and S. Graham, ‘Comparing patent litigation across
Europe: a first look’, Stanford Technology Law Review 17 (2014), 655,
655–708.

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66 European patent litigation in the shadow of the UPC

of cases that actually reach a final decision, rather than a settle-

ment, in patent litigation proceedings across jurisdictions. One key
point they make about the Netherlands is that there is a much larger
relative frequency of final judicial decisions in the Netherlands
when compared to the UK, Germany and France, where settlements
are more commonplace.242

MARKING THE DIFFERENCES BETWEEN THE

FOUR JURISDICTIONS: LOOKING AHEAD TO THE
UPC
From the analysis undertaken in this chapter, it is clear that there
are both substantive and procedural differences between the patent
litigation systems of the UK (England and Wales), Germany, France
and the Netherlands. These differences are important for assessing
the impact the UPC may have on European patent litigation over
the coming chapters.

Disclosure and Evidence Gathering

One of the major procedural variances between jurisdictions con-

cerns disclosure and evidence gathering. In the UK, at the PHC,
there is very wide disclosure, as well as the use of experiments and
expert evidence. In Germany and the Netherlands, disclosure is
much more limited. In France, the saisie proceedings allow paten-
tees to gather evidence on alleged infringements, even before a full
case filing has been initiated.

Judicial Expertise

Regarding the judges, in the UK, Germany and the Netherlands,

judges tend to be patent experts. Only in France do judges not tend
to be patent experts.

242
N. Van Zeebroeck and S. Graham, ‘Comparing patent litigation across
Europe: a first look’, Stanford Technology Law Review 17 (2014), 655,
655–708.

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European patent litigation under the EPC 67

Forum Shopping

In the UK (England and Wales), depending on the size and value of

the claim, the filing will typically be either at the IPEC or the PHC;
in France, patent cases must be taken at the TGI in Paris; and in the
Netherlands, first-instance actions must be filed at the patent
chamber of the district court in The Hague. Uniquely among the
four jurisdictions, litigants in Germany can engage in forum shop-
ping, i.e. they may choose among several regional courts (LG)
where to file an infringement claim – for example, Düsseldorf,
Mannheim or Munich.

Bifurcation

German bifurcation marks a key variation between the four legal

systems (such a system does not exist in the UK, France or the
Netherlands). Examining the German experience of bifurcation in
detail is of particular importance with respect to the analysis of the
UPC undertaken in later chapters because the UPC will feature an
option for bifurcation.
One advantage of bifurcation is that from the patentee perspec-
tive it can lead to swift and efficient enforcement of a patent at the
LG. Another advantage is that the BPatG can train and deploy
technical judges who accumulate a large amount of expertise
regarding assessing patent validity, something that facilitates coher-
ent claim construction and potentially increases legal certainty
regarding the validity of patents.243
However, there is one major downside for parties accused of
infringement – under the bifurcated system, one of the LG in
Germany may grant an injunction to a patentee against a potential
infringer with respect to a patent that is later found to be invalid by
the EPO or the BPatG. This is the dreaded ‘invalid but infringed’
scenario investigated by Cremers and colleagues, who state that in
the context of infringement cases that involve a parallel revocation
claim, in at least 12.3% of all such cases the patents are held to be

243
K. Cremers, F. Gaessler, D. Harhoff and C. Helmers, ‘Invalid but
infringed? An analysis of Germany’s bifurcated patent litigation system’, Max
Planck Institute for Innovation & Competition Research Paper No. 14-14
(2014), 1, 1–3.

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68 European patent litigation in the shadow of the UPC

infringed at first instance, yet later held invalid, or partially invalid,

by the annulment court.244
Another potential problem with bifurcation is consistency of
patent assessment. Cremers et al. note that in Germany the LG – in
infringement cases – and the BPatG – in validity actions – construct
the patent’s claims independently from one another, something
which can result in inconsistent claim constructions. For instance,
in infringement cases patent claims may be interpreted broadly, but
in validity actions claims tend to be interpreted as narrowly as
possible. Cremers et al. state that in Germany this ‘creates the
problem that an infringement court might issue an injunction
against a defendant on the basis of a broad claim construction
which would inevitably lead to the invalidation in view of a certain
piece of prior art’.245 Yet, at the BPatG, the patentee typically
argues for a narrow interpretation of the patent, which could lead to
the patent being upheld.246 This issue does not, of course, arise
when validity and infringement are assessed at the same time by the
same court, as happens in the UK, France and the Netherlands.
Cost is another issue of concern. Cremers et al. suggest that
within a bifurcated system it may be expensive to make an
invalidity counterclaim to an infringement claim, as this must be
filed and argued within a separate court system to the infringement
claim, further noting that this has the potential to discourage
smaller-sized companies with fewer resources from taking such
claims.247 In other words, in a bifurcated system the additional
costs involved in maintaining a separate validity challenge to the

244
K. Cremers, F. Gaessler, D. Harhoff and C. Helmers, ‘Invalid but
infringed? An analysis of Germany’s bifurcated patent litigation system’, Max
Planck Institute for Innovation & Competition Research Paper No. 14-14
(2014), 1, 23.
245
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 30, noting that a patent claim must be novel ‘over the whole
breadth of the scope of protection’.
246
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 30.
247
See generally K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G.
Licht, L. McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion
Paper No. 13-07 (2013), 1.

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European patent litigation under the EPC 69

patent may lead alleged infringers to refrain from taking validity

actions. This may help to speed up the enforcement system, but it
might also lead to cases of injustice (if an alleged infringer is put
off challenging the patent’s validity due to cost fears).

Length of Oral Hearing

Notably, the UK features the most lengthy oral hearings, featuring

the use of expert evidence and cross-examination, as well as the use
of experiment-based evidence. In both Germany and the Nether-
lands, a paper-based system is used, featuring short oral hearings
where ‘the courts rely largely on their own technical experience
gained in the many patent cases they have handled’.248 In France,
oral hearings are also relatively short when compared to the UK.

Length of Overall Proceedings

Furthermore, given the aim of the UPC to produce a speedier

litigation system, it is worth taking into account the overall speed of
the current system. Cremers et al. state that the median durations
for infringement cases are 9 months in Germany, 10 months in the
Netherlands, 11 months in the UK and 20 months in France.249
Looking ahead to the UPC, it is worth noting that at present the
differences in the lag between the filing of a claim and the
corresponding judgment provide incentives for the strategic filing of
patent actions in faster jurisdictions. For instance, patentees might
want to file a case in the speediest jurisdiction – Germany – and
then use the threat of an enforceable injunction to obtain a
favourable settlement for ongoing litigation in other jurisdictions.
Regarding invalidity, claims for revocation of a patent are
decided fastest in the UK (within less than a year), but take
considerably longer in Germany (on average, 22 months). Interest-
ingly, Cremers et al. demonstrate that focusing on a single issue
does not appear to have any substantial effect on the median

248
Hoffmann-Eitle, The EU Patents Package Handbook: A Practioner’s
Guide (Munich: Hoffmann-Eitle, 2014), 33.
249
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 46.

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70 European patent litigation in the shadow of the UPC

duration of a case at the PHC; in other words, pure infringement

cases in the UK take around the same time as cases involving both
infringement and validity.250 By contrast, in Germany the overall
length of proceedings depends to some extent on whether solely an
infringement case is filed at the LG or whether the validity of a
patent is subsequently challenged at the BPatG. The reasons for this
are as follows: (i) the validity action is typically filed several
months after the infringement action has been initiated; and (ii) the
first-instance validity judgment is commonly handed down at the
BPatG with a substantial lag relative to the first-instance infringe-
ment judgment at the LG. Cremers et al. state that the total length
of an infringement case in Germany, if the alleged infringer
challenges validity at the BPatG, takes on average 24 months – far
longer than a standalone infringement action (9 months).251 Thus,
with respect to Germany, while bifurcation has the advantage that it
allows the infringement courts to focus on a single issue, and thus
decide the infringement claim more quickly, the disadvantage is the
considerable delay that can arise when both infringement and
validity are at issue. The lengthiness of the process provides strong
incentives to parties to settle the invalidity challenge out of court
(even where there is a strong claim that the patent is invalid).
Regarding the UPC, given the availability of bifurcation it is
possible that similar incentives to settle invalidity challenges, even
where the alleged infringer thinks the patent is invalid, could
emerge within the UPC system. Yet, as explored in detail in Chapter
3, the limits that have been imposed on case length at the UPC,
coupled with the crucial fact that bifurcation will be optional at the
UPC – not mandatory as it is in Germany – mean that incentives to
settle (where there is a strong claim that the patent is invalid) are
unlikely to develop into a serious issue at the UPC.

250
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 46–7.
251
The fact that invalidity claims can only be filed at the BPatG after an
opposition at the German Patent and Trademark Office (DPMA) or the EPO
(or after the period for an opposition has expired) may further delay the
decision on validity.

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European patent litigation under the EPC 71

Case Volumes

The volume of court cases differs substantially across jurisdictions.

Although Cremers et al. note that comparing case counts across
jurisdictions is difficult – given the varying sizes of the economies
of the four jurisdictions and the distinction between a bifurcated
and a non-bifurcated system – it is clear that a substantially larger
number of patent cases is heard by the LG in Germany than the
other jurisdictions combined.252 Reasons for Germany’s patent
litigation dominance include the fact that (i) obtaining an injunction
against a potential infringer in Germany can severely affect that
competitor’s ability to market products successfully in the EU; and
(ii) the German courts have a patentee-friendly reputation, i.e.
Germany is seen as the ‘go to’ jurisdiction to obtain an injunction
against an infringer on a speedy, cost-effective basis.
The comparative lack of standalone invalidity challenges in
France marks a clear distinction from the German system, where
validity actions must be filed separately. Furthermore, in the UK
initial validity challenges are common due in large part to the
doctrine of ‘clearing the way’. However, there is no French
equivalent of this doctrine; in fact, with regard to France there is
‘no specific advantage to a possible infringer taking the initiative of
starting revocation proceedings’.253
It is further notable that there are large variances in volumes of
cases even within Germany – Cremers et al. show that the LG in
Düsseldorf hears more than seven times as many cases as the

252
However, as discussed above, data for case filings in the UK in
2007–2013 point to a substantial increase in the caseload in the UK – see C.
Helmers, Y. Lefouili and L. McDonagh, ‘Examining Patent Cases at the Patents
Court and Intellectual Property Enterprise Court 2007–2013’, A Report Com-
missioned by the UK Intellectual Property Office (March 2015), 1, available
at www.gov.uk/government/publications/examining-patent-cases-at-the-patents-
court-and-ipec-2007-2013.
253
T. Bouvet, ‘France’, in M.C. Elmer and C.G. Gramaenopoulos (eds),
Global Patent Litigation (Arlington, VA: Bloomberg BNA, 2014), 546–89,
589.

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72 European patent litigation in the shadow of the UPC

regional court in Munich.254 With regard to the UPC, the domin-

ance of Germany indicates that for the UPC to become the key
venue for patent litigation in Europe, it will have to replace
Germany as the primary jurisdiction of choice for patent litigants.
Furthermore, the existence of forum shopping within Germany,
with Düsseldorf the most popular venue, indicates that forum
shopping may occur within the UPC. Both of these aspects of
European patent litigation are discussed further in the context of the
interview data in Chapter 4.

Judicial Outcomes

There are significant differences across jurisdictions with regard to

the outcomes of cases that were decided by a first-instance judg-
ment on the merits of the case. In the UK, Cremers et al. note that
infringement is the most common initial claim at the PHC, but
revocation claims are much more common than in the other three
jurisdictions.255 Revocation is the most common outcome of a
judgment at the PHC, even when the original claim is for infringe-
ment. Not for nothing has the UK been traditionally viewed as an
‘anti-patent’ jurisdiction.256 Yet, as noted earlier, the rate of revoca-
tion has begun to decline slightly in recent years, and this may lead
to the UK being seen as a less ‘anti-patent’ jurisdiction in the years
to come.
In Germany, Cremers et al. note that infringement is by far the
most common initial claim, and a relatively low number of patents
are challenged via the separate revocation proceeding – only in
around a third of infringement cases does the defendant file a claim
for revocation with the BPatG, and only a very low share of patents

254
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 1–5.
255
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 1–5.
256
G. Moss, M. Jones and R. Lundie-Smith, ‘Just how “anti-patent” are
the UK courts?’, Journal of Intellectual Property Law & Practice 5 (2010),
148, 148–50.

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European patent litigation under the EPC 73

involved in an infringement suit are actually revoked.257 Con-

sequently, Germany is viewed as a patent-friendly jurisdiction. In
both France and the Netherlands, infringement is by far the most
common initial claim and the most common outcome of a judg-
ment. As a result, like Germany, France and the Netherlands are
viewed as patent-friendly jurisdictions.258

Types of Patents Litigated in the Various Jurisdictions

It is worth taking account of the concentration of cases involving

certain technologies in a given jurisdiction. On this, it is clear that
cases concerning patents that fall into the areas of machinery and
engineering are litigated mostly in Germany; by contrast, the UK
courts system deals, proportionately, with the greater share of
complex pharmaceutical and chemical patent cases in Europe;
while the Paris court is dominated by electronic patents.259
Further to this, a larger share of EPs is litigated in the UK and
the Netherlands than in Germany and France, where national
patents are litigated with more frequency than in the UK and the
Netherlands.260

Injunctions

In Germany, preliminary proceedings are rare due to the speed of

the normal infringement proceedings, whereby injunctions can be
granted by the LG based solely on an assessment of the infringe-
ment claims (with no assessment of validity). For this reason,
Germany is the most popular destination for litigants seeking to

257
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 47.
258
T. Bouvet, ‘France’, in M.C. Elmer and C.G. Gramaenopoulos (eds),
Global Patent Litigation (Arlington, VA: Bloomberg BNA, 2014), 546–89,
589.
259
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 60.
260
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 5.

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74 European patent litigation in the shadow of the UPC

obtain injunctions against alleged infringers. Moreover, due to

bifurcation, if the LG does not stay the infringement proceedings
pending a separate validity action, an injunction may be granted a
year or more before the question of validity is considered by the
BPatG.
As noted above, in France, preliminary saisie proceedings for
search and seizure of an alleged infringer’s goods are common at
the outset of infringement actions. Nevertheless, preliminary injunc-
tions themselves tend to be rarely issued in France. France also
takes the longest of the four jurisdictions to reach a first-instance
decision on infringement, which has a knock-on effect on enforce-
ment via an injunction.
In the UK (England and Wales) at the IPEC and the PHC,
preliminary injunctions are rare, something that might be explained
in part by the practice of ‘clearing the way’ discussed earlier,
whereby a competitor, in order to avoid a possible later final
injunction, may attempt to ‘clear the way’ before, for example,
releasing a product which could infringe another company’s pat-
ent.261 Cross-border injunctions are possible in the UK, but only
where patent validity is not in doubt. In the Netherlands, a
preliminary injunction to halt infringing activities may be obtained
within two weeks of the filing of a case. As noted earlier, a
cross-border injunction is only available with respect to preliminary
proceedings.

Settlements

Germany features by far the highest proportion of settlements of the

four jurisdictions. Cremers et al. show that 46.1% of cases filed as
infringement actions in Germany end with a settlement, whereas
this is true for only around 33% of the equivalent cases in the UK

261
In SmithKline Beecham & Anor v Apotex Europe Ltd & Ors [2002]
EWHC 2556; [2003] EWCA (Civ) 137 Jacob J (as he then was) noted at para.
68: ‘Where litigation is bound to ensue if the defendant introduces his product
he can avoid all the problems of an interim injunction if he clears the way first.
That is what the procedures for revocation and declaration of non-infringement
are for.’

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European patent litigation under the EPC 75

and 16.3% in France.262 Cremers and colleagues state that in

Germany there are relatively large incentives for the claimant and
defendant to settle the revocation proceedings before a full hearing
at the BPatG.263

Parallel Litigation across EU Jurisdictions

At present, there is (unnecessary) duplication of litigation concern-

ing the same patent across the four jurisdictions. Cremers et al.
state that most EPs that are litigated in a given jurisdiction have
also been validated in all four jurisdictions, though fewer are
validated in the Netherlands than in the other three.264 They also
note that a relatively high proportion (26%) of cases litigated in the
UK are also litigated in one or more of the other jurisdictions; and
that for the Netherlands, the equivalent figure is 15%, and for
France it is 6%. Meanwhile, only 2% of German cases are litigated
in one or more of the other jurisdictions. Overall, looking at
pan-jurisdictional litigation, Cremers et al. observe that ‘only 8.4%
of all litigated EPs are subject to litigation in more than one
country’, but these patents are likely to be ‘important, complex and
valuable’.265
On this point, Mejer and van Pottelsberghe suggest that there are
substantial differences with respect to litigation outcomes concern-
ing the same patent across different European jurisdictions.266 This
is borne out by the Cremers study, something which adds to the

262
See generally K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G.
Licht, L. McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion
Paper No. 13-07 (2013), 1, 47.
263
K. Cremers, F. Gaessler, D. Harhoff and C. Helmers, ‘Invalid but
infringed? An analysis of Germany’s bifurcated patent litigation system’, Max
Planck Institute for Innovation & Competition Research Paper No. 14-14
(2014), 1, 23.
264
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 60.
265
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 5.
266
E. Mejer and B. van Pottelsberghe, ‘Economic incongruities in the
European patent system’, European Journal of Law and Economics 34 (2012),
215, 215–17.

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76 European patent litigation in the shadow of the UPC

argument that parallel litigation creates unnecessary complexities

and uncertainties.267
This view echoes a point made by Harhoff in a 2009 paper
exploring the costs and benefits of the current fragmented patent
litigation system in Europe – arguing that the present litigation
system leads to costly duplication of cases across Europe.268
According to Harhoff, one major benefit of the enactment of a new,
low-cost, unified patent litigation system would be better access to
patent enforcement for companies that cannot currently afford the
costs of undertaking patent litigation in multiple jurisdictions.269

Court Fees and Litigation Costs

Regarding fees, the most useful comparison can be made between

the UK and Germany. As stated earlier, in the UK court fees have
traditionally followed a ‘fixed’ fee model dependent on the number
of applications/hearings, while the Germans use a ‘value-based’ fee
system.270 German court fees often exceed €10,000, and can even
sometimes fall into the range of €100,000–200,000 in high-value
cases.271 Moreover, the UK has recently switched to a value-based
model of 5% of case value up to a ceiling of £10,000 for cases
valued at £200,000 or more. The existence of this (prior) divergence
between the two systems is of interest given the fact that the UPC

267
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 60.
268
D. Harhoff, ‘Economic cost-benefit analysis of a unified and integrated
European patent litigation system’, EU Final Report Tender No. MARKT/2008/
06/D (2009), available at http://ec.europa.eu/internal_market/indprop/docs/
patent/studies/litigation_system_en.pdf.
269
See generally K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G.
Licht, L. McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion
Paper No. 13-07 (2013), 1.
270
S. Cohen, ‘Selected IP jurisdictions: Germany’ (2007), 1, 4, available
at www.taylorwessing.com/uploads/tx_siruplawyermanagement/Handbook_of_
European_IP_-_Simon_Cohen.en.pdf. The chapter is also published in A. Jolly
and J. Philpott (eds), The Handbook of European Intellectual Property Man-
agement (London: Kogan Page, 2007).
271
Bardehle Pagenberg, Patent Infringement Proceedings (2013), 1, 12,
available at www.bardehle.com/fileadmin/contentdocuments/broschures/
Patent_Infringement_Proceedings.pdf.

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European patent litigation under the EPC 77

will feature a mixture of fixed and value-based fees. Comparisons

between the two systems with respect to the UPC are made in the
context of the empirical research in Chapter 4.
With respect to overall costs, the UK is by far the most costly
jurisdiction to litigate in, with costs typically reaching £1–1.5
million per side (potentially reaching £2–3 million per side in
complex cases).272 In Germany, the private legal costs of patent
litigation usually range between €40,000 and €100,000 per side,
though they can go higher in lengthy and complex proceedings.273
In France, one estimate states that the private costs range from
€50,000 to around €200,000 per side,274 figures backed up by
another estimate giving a costs range of around €40,000–150,000
per party (though the costs can potentially be higher in technical
cases).275 In the Netherlands, there is an average range of around
€60,000–200,000 per side, but costs can go significantly higher
than this, especially in non-accelerated proceedings.276
Reducing the costs of litigation is one of the key aims of the
UPC. One reason for this is to allow a greater spread of companies
to enforce their patents. Rodwell et al. state that at present SMEs
often do not file actions even where infringement has taken place as
they fear the costs of litigation.277

272
L. McDonagh and C. Helmers, ‘Patent litigation in England and Wales
and the issue-based approach to costs’, Civil Justice Quarterly 32 (2013), 369,
384.
273
G. Schoenen, M. Deck and M. Eck, ‘Germany’, in N. Beckett and J.
Morton (eds), CMS International Patent Litigation Guide (CMS, 2013), 45–50,
47; and Bardehle Pagenberg, Patent Infringement Proceedings (2013), 1, 12,
available at www.bardehle.com/fileadmin/contentdocuments/broschures/
Patent_Infringement_Proceedings.pdf.
274
B. van Pottelsberghe, Lost Property: The European patent system
and why it doesn’t work (Brussels: Bruegel Blueprint Series, 2009), available
at http://bruegel.org/wp-content/uploads/imported/publications/patents_BP_
050609.pdf.
275
J.-G. Moninand and S. Vilfeu, ‘France’, in N. Beckett and J. Morton
(eds), CMS International Patent Litigation Guide (CMS, 2013), 39–44, 41.
276
D. Harhoff, ‘Economic cost-benefit analysis of a unified and integrated
European patent litigation system’, EU Final Report Tender No. MARKT/2008/
06/D (2009), 31, available at http://ec.europa.eu/internal_market/indprop/docs/
patent/studies/litigation_system_en.pdfHarhoff.
277
S. Rodwell, P. van Eeckhout, A. Reid and J. Walendowski, Effects of
counterfeiting on EU SMEs and a review of various public and private IPR

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78 European patent litigation in the shadow of the UPC

SUMMARY: WHAT ARE THE KEY CHALLENGES

THE UPC NEEDS TO ADDRESS?
As explored over the course of this chapter, the current fragmented
system brings up a number of challenges. With respect to the
existence of parallel litigation (and divergent case outcomes) across
multiple European jurisdictions, can the UPC’s centralized proced-
ures harmonize the legal procedures concerning patent enforcement
across the various European patent territories, and at the same time
offer greater procedural and legal clarity? Can the UPC also
increase the speed of decision making, removing the time-lag
between jurisdictions that currently exists? Will the UPC help to
lower the costs of patent litigation, something particularly important
to SMEs? All of these key questions are considered in Chapters 3
and 4, which explore the UPC and UP reforms and, in particular,
address the issues most relevant to users of the system in the legal
and business communities.

enforcement initiatives and resources, Final Report to the Enterprise and

Industry Directorate-General Directorate B1 – Development of industrial
policy (2007) (Framework Contract B3/ENTR/04/093-FC-Lot 6).

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3. Analysing the reforms: the

Unified Patent Court (UPC) and
the European Patent with Unitary
Effect (UP)
THE EU PATENT REFORM PACKAGE
The previous chapter established the extent of the fragmentation of
the current patent litigation system in Europe, including the issues
of inconsistency of decision making across jurisdictions and the
costs of parallel litigation.1 It almost goes without saying that ‘a
more efficient and less expensive litigation system is desirable’.2
For this reason, unifying the patent system has for decades been a
goal of the European Union;3 yet progress towards this goal was
slow until finally, on 19 February 2013, 25 members of the
European Union signed an intergovernmental agreement (‘the
Agreement’) to create a Unified Patent Court (UPC) – a new
specialist patents court common to participating states.4 The UPC

1
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 1–5.
2
EPO Economic and Scientific Advisory Board, Recommendations for
Improving the Patent System (2012), 1, 4, available at http://documents.epo.
org/projects/babylon/eponot.nsf/0/835DA6DA218CB760C1257B2C004E809E/
$FILE/ESAB_statement_en.pdf4=.
3
J. Pila, ‘The European patent: an old and vexing problem’, Inter-
national & Comparative Law Quarterly 62 (2013), 917, 917–21. See also B.
van Pottelsberghe, Lost Property: The European patent system and why it
doesn’t work (Bruegel Blueprint Series, 2009), available at http://bruegel.org/
wp-content/uploads/imported/publications/patents_BP_050609.pdf.
4
Agreement on a Unified Patent Court (UPC Agreement), OJ C 175/01
(2013), available at http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=
OJ:C:2013:175:0001:0040:EN:PDF.

79
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80 European patent litigation in the shadow of the UPC

Agreement is part of a package of measures designed to establish

and enforce unitary patent protection within Europe.5 The aim of
the establishment of the UPC is to offer a more streamlined, less
costly and easy-to-use system with the ambition of unifying the
European patent system as much as possible.6
In addition to the UPC Agreement, the new reform measures also
include two EU regulations which establish the European Patent
with Unitary effect – a.k.a. the Unitary Patent (UP) – and the
associated translation arrangements.7 As explored over the course of
this chapter, the application and grant process for the UP will be the
same as for the regular European Patents (EPs) – the option for
unitary protection across participating EU member states comes
post-grant.
Overall, while the package is not without its critics, the reforms
provide individuals and businesses with the opportunity to protect
their inventions across participating states under a single patent
(UP), and to have disputes (on infringement or validity) settled
under a court system common to the participating states (the

5
Regulation (EU) No. 1257/2012 of the European Parliament and of the
Council of 17 December 2012 implementing enhanced cooperation in the area
of the creation of unitary patent protection (UP Regulation), OJ L 361/1 (2012)
and Council Regulation (EU) No. 1260/2012 of 17 December 2012 implement-
ing enhanced cooperation in the area of the creation of unitary patent
protection with regard to the applicable translation arrangements (Translation
Regulation), OJ L 361/89 (2012) – both documents available at: http://ec.
europa.eu/internal_market/indprop/patent/documents/index_en.htm. For a fur-
ther explanation of the changes, see the EPO website – www.epo.org/law-
practice/unitary.html. See also R. Romandini and A. Klicznik, ‘The
territoriality principle and transnational use of patented inventions: the wider
reach of a unitary patent and the role of the CJEU’, International Review of
Intellectual Property and Competition Law 44 (2013), 524; A. West, S.
Kusumakar and T. Powell, ‘Unitary patents and the Unified Patent Court’,
Computer and Telecommunications Law Review 19 (2013), 105; and M.
Brandi-Dohrn, ‘Some critical observations on competence and procedure of the
Unified Patent Court’, International Review of Intellectual Property and
Competition Law 43 (2012), 372.
6
EPO Economic and Scientific Advisory Board, Recommendations for
Improving the Patent system (2012), 1, 1–5, available at http://documents.
epo.org/projects/babylon/eponot.nsf/0/835DA6DA218CB760C1257B2C004E8
09E/$FILE/ESAB_statement_en.pdf.
7
UP Regulation and Translation Regulation.

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Analysing the reforms: the UPC and the UP 81

UPC).8 Importantly, the UPC will not only hear disputes regarding
the validity and infringement of the new UPs but also existing and
prospective EPs (subject to the transition period discussed later on
in this chapter).9

The Legal Sources of the Unified Patent Court and the UPC

Legally, the existence of the Unitary Patent is enabled by a

long-standing option under the EPC, allowing the validation of
patents on a supra-national basis.10 Specifically, the UP and UPC
are governed by the following sources of law:

+ Regulation 1257/2012, passed on 17 December 2012, creating

the European patent with unitary effect (UP).
+ Regulation 1260/2012, passed on 17 December 2012, govern-
ing the translations arrangements for the UP.
+ The International Treaty of the Unified Patent Court, signed
on 19 February 2013. This international treaty creates and
governs the operations of the UPC, which has the same legal
personality as a national court, in accordance with Article 1(2)
of the UPC Agreement.11

The EU regulations were passed into law via the system of

enhanced cooperation introduced by the Lisbon Treaty.12 Enhanced
cooperation allows a sub-group of EU MS to proceed with a new
form of regulation without every EU MS being subject to it, though

8
R. Hilty, ‘The unitary patent package: twelve reasons for concern’,
CIPA Journal 10 (2012), 553.
9
T. Cook, ‘The progress to date on the Unitary European Patent and the
Unified Patent Court for Europe’, Journal of Intellectual Property Rights 18
(2013), 584.
10
Articles 2 and 142 EPC.
11
D.P. Sant and C. de Coster, ‘The unitary patent and the European Patent
Court’, Bioscience Law Review 12 (2012), 27, available at www.taylor
wessing.com/fileadmin/files/docs/unitary_patent_court.pdf.
12
Treaty of Lisbon amending the Treaty on European Union and the
Treaty establishing the European Community, signed at Lisbon, 13 December
2007, entered into force on 1 December 2009, OJ C 306 (2007) – http://eur-
lex.europa.eu/legal-content/EN/TXT/?uri=celex:12007L/TXT.

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82 European patent litigation in the shadow of the UPC

any EU MS that chooses not to participate at the initiation of the

new system is free to join at a later date.
The EU regulations are technically already in force.13 However,
in reality they will apply only once the UPC Agreement is ratified
by the requisite 3 + 10 countries, i.e. Germany, France and the UK
+ 10 more Signatory States. As of January 2016, this ratification
has yet to take place. With the expectation that ratification will be
completed in late 2016, what is required at this stage – and what the
remainder of this chapter provides – is a thorough assessment of the
UPC and the UP.

THE UNIFIED PATENT COURT

Overview

The Unified Patent Court (UPC) is a new specialist patents court

common to participating EU Signatory States (SS) to the UPC
Agreement (all EU MS except Spain, Poland and Croatia).14 The
UPC offers a more streamlined, centralized system of patent
adjudication than the current fragmented system, giving patent
litigants the opportunity of resolving disputes (concerning infringe-
ment or validity) via the centralized procedures of the UPC.
Structurally, the UPC will be comprised of a Court of First
Instance (CFI), consisting of central divisions and local and/or
regional divisions, hosted by Signatory States or groups of Signa-
tory States, and a Court of Appeal in Luxembourg. The seat of the
primary central division will be in Paris, with specialist technology
divisions to be set up in London and Munich according to subject
matter: the London central division will deal with the chemical and
pharmaceutical fields, including life sciences; while the Munich
central division will deal with engineering patents. In addition to
validity challenges, the central divisions will also deal with
infringement actions in their respective technological fields where
these are transferred from the UPC local or regional divisions; and

13
Article 18(2) UP Regulation and Article 7(2) Translation Regulation.
14
UPC Agreement. See also joined cases C-274/11 and C-295/11, Spain
and Italy v Commission, Judgment of 16 April 2013, OJ C175/1 (2013),
available at http://curia.europa.eu/juris/liste.jsf?num=C-274/11.

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Analysing the reforms: the UPC and the UP 83

they will also hear infringement cases from countries where there is
no UPC local or regional division. The UPC will also have new
mediation and arbitration facilities in Portugal and Slovenia.
The UPC is intended to be self-financing, generating sufficient
revenue to pay for the associated administration costs.15 In accord-
ance with Article 36(3) of the UPC Agreement, the UPC fees will
be based on a hybrid system – there will be both a fixed fee and a
value-based fee set above a pre-defined ceiling. The precise fee
levels were agreed by the Preparatory Committee of the UPC in
early 2016 after lengthy negotiations.16

International Jurisdiction

With respect to the UPC’s international jurisdiction, the Brussels I

Regulation, which governs international jurisdiction for EU MS
courts, is highly relevant.17 Moreover, the Regulation has recently
been amended to take account of the UPC.18 The aim of the
Brussels I Regulation is to prevent parallel litigation proceedings

15
Article 36(1) UPC Agreement.
16
See details of the UPC court fees at http://www.unified-patent-
court.org/news/upc-court-fees-and-recoverable-costs.
17
Regulation No. 1215/2012 of 12 December 2012 on jurisdiction and
the recognition and enforcement of judgments in civil and commercial matters
(recast) (hereafter known as Brussels I Regulation recast), OJ L 351 (2012) –
available at http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:
2012:351:0001:0032:en:PDF which recast Council Regulation (EC) No.
44/2001 of 22 December 2000 on jurisdiction and the recognition and
enforcement of judgments in civil and commercial matters (Brussels I), OJ L
12 (2001) and the original Brussels Convention on Jurisdiction and the
Enforcement of Judgments in Civil and Commercial Matters of 27 September
1968 (Brussels Convention), OJ L 304 (1978). Meanwhile, the Convention of
Sept 16 1988 on jurisdiction and the enforcement of judgments in civil and
commercial matters (hereinafter ‘Lugano Convention’), OJ L 319 (1988)
covers non-EU MS such as Iceland, Liechtenstein, Norway and Switzerland,
and is also relevant to Denmark, where it preceded the application of the
Brussels I Regulation. If a defendant is domiciled within a Brussels I
Regulation MS, i.e. the vast majority of EU MS, then its provisions will apply;
if however, the defendant is domiciled within a MS of the Lugano Convention
– including Denmark – then its provisions apply (Article 54b Lugano Conven-
tion and Article 68(2) Brussels I Regulation recast).
18
Brussels I Regulation recast. See also Article 31 UPC Agreement and
the Lugano Convention.

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84 European patent litigation in the shadow of the UPC

occurring before different EU MS courts; in line with this, the

standard rule under the Regulation is that jurisdiction is exercised
by the MS in which the defendant is domiciled, as determined by
reference to its statute, place of administration or place of busi-
ness.19 Nationality is not relevant.
Nevertheless, there are exceptions under the Regulation that
allow a defendant to be sued in jurisdictions other than the place of
domicile. For instance, in accordance with Article 7(2) of the
Brussels I Regulation (as amended), legal action may be taken
against a tortious infringer – such as a patent infringer – in the MS
where the act of infringement is about to occur, is occurring or has
already occurred. In practice, this means that the patentee often has
a choice of jurisdiction, i.e. either the place where the infringer is
domiciled or the place of infringement. Similarly, in a case where
there is more than one infringer, under Article 8(1) of the Brussels
I Regulation (as amended), legal action can be taken against all
defendants in an MS where one of the defendants is domiciled, so
long as the ‘claims are so closely connected that it is expedient to
hear and determine them together to avoid the risk of irreconcilable
judgments resulting from separate proceedings’.20
If the infringing party does not have its place of domicile within
an EU MS (or a Lugano MS) but is instead located within, for
example, the USA or Japan, under Article 6(1) of the Brussels I
Regulation recast, the jurisdiction of the legal action does not
depend on the terms of the Regulation, but on the national laws of
the relevant member state.

The Substantive Patent Law of the UPC

In light of the sources of law discussed above – primarily the UPC

Agreement – it is worth taking a closer look at the specific law to
be applied by the UPC. Articles 25–30 of the UPC Agreement set
forth the conditions for a new substantive patent law which shall
apply to ‘patents’, i.e. UPs and EPs (and related SPCs) that fall
within the jurisdiction of the UPC.21 The new substantive law will

19
Article 4(1) Brussels I Regulation recast.
20
Article 8(1) Brussels I Regulation recast.
21
See also Articles 3b and 32(1) UPC Agreement.

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Analysing the reforms: the UPC and the UP 85

also need to be interpreted by national courts in some circum-

stances, though the precise boundaries of when this will happen
have yet to be decided.22 The reason for this uncertainty is that
Articles 25–30 of the UPC Agreement lack the language found in
Articles 24 and 56 of the UPC Agreement which limits the impact
of these provisions in the context of the UPC. If the Preparatory
Committee is correct, the intention behind the UPC Agreement was
not to harmonize the substantive patent law of Signatory States,
and, consequently, national courts should continue to apply their
own national laws to EPs and related SPCs (something that will be
of particular importance during the transition period discussed later
on in this chapter).23 This may mean in certain circumstances that
activities that would be construed as infringing by the UPC under
Articles 25–30 would not be construed in that way by a national
court applying its own national laws on infringement.24 Also of
importance are the rules found in Article 8 Regulation 864/2007
concerning the law applicable to non-contractual obligations (Rome
II).25 Under these rules, national law may apply to fill gaps left by
the various agreements – EU, UPC Agreement, EPC, etc. – with
regard to the traditional EPs (with the national law of the territory
where protection is sought applying) and with the UPs (with the
national law of the territory where the acts of infringement take

22
National courts will necessarily have a role in determining this – see
UPC Preparatory Committee’s Interpretative Note on the consequences of the
application of Article 83 UPC Agreement, 29 January 2014, available at
www.unified-patent-court.org/news/71-interpretative-note-consequences-of-the-
application-of-article-83-upca.
23
UPC Preparatory Committee’s Interpretative Note on the consequences
of the application of Article 83 UPC Agreement, 29 January 2014, available at
www.unified-patent-court.org/news/71-interpretative-note-consequences-of-the-
application-of-article-83-upca.
24
Hoffmann-Eitle, The EU Patents Package Handbook: A Practioner’s
Guide (Munich: Hoffmann-Eitle, 2014), 37. See also B. Schröer, ‘Einheits-
patentgericht: Überlegungen zum Forum-Shopping im Rahmen der alternativen
Zuständigkeit nach Article 83 Abs. 1 EPGÜ’, Gewerblicher Rechtsschutz und
Urheberrecht international (GRUR Int.) 1 (2013), 1102.
25
Regulation 864/2007 of the European Parliament and of the Council of
11 July 2007 on the law applicable to non-contractual obligations (Rome II),
OJ L 199/40 (2007).

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86 European patent litigation in the shadow of the UPC

place applying).26 Moreover, there may be further complications if

the infringing acts have taken place in a number of different
countries.27
While some of its elements are not yet settled, it is clear that the
new substantive patent law is to be modelled on the Community
Patent Convention (a convention which never actually entered into
force but which has been influential on much subsequent national
patent law within the EU).28 The new substantive law will be
primarily relevant in the context of infringement (direct and indi-
rect) as well as defences to infringement. In addition to the new
substantive law, general principles of civil law will also have to be
observed.
With respect to the new substantive patent law, the scope of
patent protection will be determined by its claims, as envisaged by
EPC Article 69. Regarding direct infringement under Article 25 of
the UPC Agreement, an issue that the UPC will have to deal with is
maintaining consistency across all UPC divisions. Consider one of
the key directly infringing acts: ‘making’. Although this category of
making is an act common to the laws of EPC MS, its interpretation
can vary within each jurisdiction. For example, within the UK and
German jurisdictions, a current variance exists concerning how to
define ‘making’ in the context of repairs and replacement parts. In
both the UK and Germany, the courts look at the ‘relation of the
replacement part to the inventive idea’; however, inconsistency can
nonetheless arise because the German courts additionally look at
the question of whether the relevant trade circle would – regardless
of patent law – consider the part to be a ‘replacement part’.29
Similarly, with respect to the ‘offering’ for sale/supply of a patented

26
Hoffmann-Eitle, The EU Patents Package Handbook: A Practioner’s
Guide (Munich: Hoffmann-Eitle, 2014), 112–15.
27
Hoffmann-Eitle, The EU Patents Package Handbook: A Practioner’s
Guide (Munich: Hoffmann-Eitle, 2014), 115.
28
Convention for the European patent for the common market (Com-
munity Patent Convention) 76/76/EEC, OJ L 17 (1976), available at http://eur-
lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:41975A3490.
29
Bundesgerichtshof (BGH) decision of 17 July 2012, as reported by
International Review of Intellectual Property and Competition Law (IIC) 44
(2013), 351, Pallet Container II (X ZR 97/11); also noted by Hoffmann-Eitle,
The EU Patents Package Handbook: A Practioner’s Guide (Munich:
Hoffmann-Eitle, 2014), 124.

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Analysing the reforms: the UPC and the UP 87

product under Article 25 of the UPC Agreement, judicial diver-

gences may appear. At present in Germany, for instance, ‘offering’
is considered to be an infringing act in and of itself – with an offer
potentially encompassing a written/oral approach or even an inter-
net advertisement – regardless of when the supply is due to take
place;30 but in the UK an offer is not infringing if it is made clear
that the actual supply of the patented product to, for example, the
buyer will only take place once the patent has expired and not
before.31 Moreover, there are other potential divergences between
the UK and Germany in the context of direct infringement – such as
‘using’, ‘storing’ and ‘placing on the market’.32 Similarly, regarding
defences – such as invalidity,33 prior use,34 research use and the
Bolar Exemption,35 exhaustion36 and competition law-related
defences37 – it will be vital for national variations in judicial
reasoning to be smoothed over by the UPC. Indeed, regarding the
‘Bolar Exemption’ for clinical trials, it is important to recall that
this was framed by an EU Directive which gave EU MS a certain
margin to interpret the exemption.38 As a result, some EU MS
interpreted the exemption more broadly than others, expanding it to
include not only trials/studies relating to the abbreviated procedure
for obtaining marketing authorization for a generic drug, but also
trials/studies relating to new and innovative drugs. Under the UPC

30
Bundesgerichtshof (BGH) decision of 5 December 2006, as reported by
Gewerblicher Rechtsschutz und Urheberrecht international (GRUR Int.)
(2007), 221, Simvastatin; also noted by Hoffmann-Eitle, The EU Patents
Package Handbook: A Practioner’s Guide (Munich: Hoffmann-Eitle, 2014),
125.
31
Gerber Garment Technology v Lectra Systems [1995] RPC 383.
32
For a full account of these, see Hoffmann-Eitle, The EU Patents
Package Handbook: A Practioner’s Guide (Munich: Hoffmann-Eitle, 2014),
125–6.
33
Article 32(1) UPC Agreement.
34
Article 28 UPC Agreement.
35
Article 28(b) and (d) UPC Agreement.
36
Article 6 UP Regulation.
37
Article 15 UP Regulation.
38
Article 10(6) of Directive 2001/83/EC of 6 November 2001 on the
Community code relating to medicinal products for human use (as amended),
OJ L 311 (2001) – http://ec.europa.eu/health/files/eudralex/vol-1/dir_2001_83_
consol_2012/dir_2001_83_cons_2012_en.pdf.

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88 European patent litigation in the shadow of the UPC

Agreement, the Bolar Exemption will apply only to generic drugs,

resulting in a change to the scope of the law in some MS.39
Finally, with respect to UPs as ‘objects’ of property under
national law, they are to be treated as if they were national patents
of the territory where unitary protection applies and where the
patent applicant had his/her/its principal residence/place of business
when the application was filed.40 If at time of filing the applicant
had no principal residence/place of business within the EU, the
national law of the EPO, i.e. Germany, will apply. Thus, German
law will come to be of importance for determining issues related to
UP ownership and transactions where the applicant is a non-EU
inventor/company.

The UPC’s Relationship with the CJEU

The CJEU is a supra-national court and the final arbiter of all EU

law matters.41 Once up and running, the UPC will be the final
arbiter of substantive patent matters such as validity and infringe-
ment in the context of UPs, and, where relevant, EPs. The relation-
ship between the two courts is therefore of great significance. In
this regard, it is worth recalling that even though the EPC is not an
EU treaty – and the EPO is not an EU body – the EU and its Court
of Justice (CJEU) have for more than a decade played a prominent
role within the European patent system as a result of the EU
Biotechnology Directive and the EU provisions regarding Supple-
mentary Protection Certificates (which are discussed in detail
later).42 Nonetheless, the CJEU’s role in patenting is quite limited,
and it is not foreseen that the CJEU will have an oversight role with

39
Hoffmann-Eitle, The EU Patents Package Handbook: A Practioner’s
Guide (Munich: Hoffmann-Eitle, 2014), 38.
40
Article 7 UP Regulation.
41
R. Romandini and A. Klicznik, ‘The territoriality principle and trans-
national use of patented inventions: the wider reach of a unitary patent and the
role of the CJEU’, International Review of Intellectual Property and Com-
petition Law 44 (2013), 524, 524–7.
42
Directive 98/44/EC of the European Parliament and of the Council of 6
July 1998 on the legal protection of biotechnological inventions, OJ L 213
(1998). For analysis of the conflicts that can arise from the CJEU’s role, see G.
Gaskell, S. Stares and A. Pottage, ‘How Europe’s ethical divide looms over
biotech law and patents’, Nature Biotechnology 30 (2012), 392.

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Analysing the reforms: the UPC and the UP 89

respect to the primary matters within the UPC’s remit – validity and
infringement of EPs and UPs.43
However, it is further worth noting that, unlike the CJEU, the
UPC has been constructed with the legal status of a national court;
and in line with this, under Article 21 of the UPC Agreement a
referral can be made by the UPC to the CJEU in much the same
way as an EU MS national court would make such a referral.44
Specifically, a matter may be referred by the UPC to the CJEU
where there is an issue covered by EU law, such as in the following
circumstances:

+ where there is an issue of EU patent law governed by

Directive 98/44/EC (biotechnological inventions)45 and/or
Regulation 2100/94 (plant variety rights)46
+ where there is an issue governed by Enforcement Directive
2004/48/EC
+ where there is an issue covered by Regulation 469/2009
(SPCs for medicinal products)
+ where there is an issue covered by one of the other EU
Directives explicitly mentioned in the UPC Agreement under
Article 27; that is, Directive 2001/82/EC (veterinary medici-
nal products);47 Directive 2001/83/EC (medical products for
human use), Directive 2009/24/EC (computer programs),48

43
Hoffmann-Eitle, The EU Patents Package Handbook: A Practioner’s
Guide (Munich: Hoffmann-Eitle, 2014), 46.
44
See also Article 1(2) UPC Agreement and Article 267 Consolidated
version of the Treaty on the Functioning of the European Union (TFEU), C
326/01 (2012), available at http://eur-lex.europa.eu/legal-content/EN/TXT/
?uri=OJ:C:2012:326:TOC.
45
Directive 98/44/EC of the European Parliament and of the Council of 6
July 1998 on the legal protection of biotechnological inventions, OJ L 213/13
(1998).
46
Council Regulation (EC) No. 2100/94 of 27 July 1994 on Community
plant variety rights OJ L 227 (1994). See also Council Regulation (EC) No.
873/2004 of 29 April 2004 amending Regulation (EC) No. 2100/94 on
Community plant variety rights, OJ L 162 (2004).
47
Directive 2001/82/EC of the European Parliament and of the Council of
6 November 2001 on the Community code relating to veterinary medicinal
products, OJ L 118 (2001).
48
Directive 2009/24/EC of the European Parliament and of the Council of
23 April 2009 on the legal protection of computer programs, OJ L 111 (2009).

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90 European patent litigation in the shadow of the UPC

Directive 98/44/EC (biotechnological inventions) and Regu-

lation 2100/94 (plant variety rights)
+ where there is a question of how to interpret Regulation
1257/2012 (UP Regulation).

Thus, the CJEU will undoubtedly have some judicial input within
the UPC system, though every effort has seemingly been made by
the planners to keep this role to a minimum with regard to
substantive patent matters.49 The experience of the CJEU’s expan-
sive interventions in the areas of trade mark law and copyright law
within the EU may have had an influence in this respect.50

Standing and Legal Representation before the UPC

With respect to standing before the UPC, the usual legal require-
ment that a party is a natural or legal person applies. Regarding
infringement actions, under Article 47(1) the patent proprietor has
the right to bring a case before the UPC. An exclusive licensee to
the patent may also bring a case (unless the licence stipulates
otherwise) but must inform the patent owner that he/she/it intends
to do so;51 however, a non-exclusive licensee will not have this
right unless it is specifically granted to the licensee in the terms of
the licence. Where an infringement claim is brought by a licensee,
if the patent’s validity is then disputed, for example via a revocation
counterclaim, the patentee must join and take part in the proceed-
ings; or, alternatively, a separate revocation claim must be brought
against the patentee.52
Any legally qualified person qualified to practice law in a
national SS may represent a party before the UPC at the Court of

49
R. Romandini and A. Klicznik, ‘The territoriality principle and trans-
national use of patented inventions: the wider reach of a unitary patent and the
role of the CJEU’, International Review of Intellectual Property and Com-
petition Law (IIC) 44 (2013), 524, 524–9.
50
See J. Griffiths, ‘Constitutionalising or harmonising: the Court of
Justice, the right to property and European copyright law’, European Law
Review 38 (2013), 65; and L. McDonagh, ‘From brand performance to
consumer performativity: assessing European trade mark law after the rise of
anthropological marketing’, Journal of Law & Society 42 (2015), 611.
51
Article 47 UPC Agreement.
52
Article 47(2–5) UPC Agreement.

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Analysing the reforms: the UPC and the UP 91

First Instance, regardless of whether it is a local, regional or central

division, or at the Court of Appeal. In addition, appropriately
qualified patent attorneys, such as those possessing the European
Patent Litigation Certificate, may also represent their clients before
the UPC.53

Focusing on the Structure of the UPC across the Local, Regional

and Central Divisions

As outlined earlier, the UPC will feature an institutional architec-

ture comprising a Court of First Instance (CFI), consisting of three
central divisions as well as a number of local and/or regional
divisions hosted by SS, or groups of SS; and a Court of Appeal.54
In addition to the courts, the UPC will also have new mediation and
arbitration facilities in Portugal and Slovenia, and a facility to train
judges in Hungary.55
There is no hierarchy as such between the UPC CFI central and
local/regional divisions, but the divisions do have different compe-
tences, as detailed below.56 As noted earlier, the seat of the primary
central division will be in Paris, with specialist technology divisions
in London and Munich.57 The precise technological division
between the UPC central divisions will be based on the WIPO
International Patent Classification (IPC) of the patent. In line with
the IPC, the London central division will deal with validity actions
in the chemical and pharmaceutical fields, including life sciences
(corresponding to WIPO IPC classifications A and C); the Munich
central division, meanwhile, will deal with patents in the engin-
eering field (corresponding to WIPO IPC classification F). The
Paris central division will deal with all other patents. As explored in
further detail later on in this chapter, the central divisions will also
deal with infringement actions transferred from local or regional
divisions as well as those from countries where there is no local or
regional division.

53
Article 48(2) UPC Agreement.
54
Articles 6(1) and 7(1–2) UPC Agreement.
55
Articles 19 and 35(1) UPC Agreement.
56
Article 33 UPC Agreement.
57
Article 7(2) UPC Agreement.

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92 European patent litigation in the shadow of the UPC

The UPC will also feature a Registry and a number of commit-

tees – Advisory, Budgetary and Administrative.58 The Statute of the
Unified Patent Court (‘UPC Statute’) envisages the setting up of a
UPC ‘Presidium’ made up of the various presidents of the CFI and
Court of Appeal along with additional judges from the courts and
Registrar.59
So far, Austria, Belgium, Denmark, Finland, Ireland, Italy, the
Netherlands and the UK have confirmed they will set up one local
division each. Germany – as the largest patent jurisdiction – will set
up four local divisions; indeed, it has been suggested that the
German local divisions are likely to prove popular given the
experience of German judges – who will form a majority on
the panels – and the perception that they are patentee-friendly.60
In accordance with Article 7(5) of the UPC Agreement, a
regional division may be set up by a number of different UPC SS.
Such divisions might make sense for territories that share borders as
well as similar legal systems such as the Scandinavian and Baltic
regions. However, under Article 33(2) of the UPC Agreement in the
case of an infringement action filed at a regional division, if the
allegedly infringing acts have taken place within the territories
covered by three or more regional divisions, the relevant regional
division must refer the case to the central division if so requested
by the defendant (a requirement that does not apply to the local
divisions). This may make it less attractive for patentees to file an
infringement case before a regional division, something which may
have a knock-on effect on the willingness of UPC SS to form such
divisions.61 Indeed, only one UPC regional division has been
confirmed so far: a Nordic–Baltic UPC regional division, serving
Sweden, Lithuania, Latvia and Estonia (with an English-language
court based in Stockholm). The absence, thus far, of ‘three or more’
UPC regional divisions means that Article 33(2) is unlikely to kick

58
Articles 10, 12 and 13 UPC Agreement.
59
Annex I UPC Agreement.
60
Hoffmann-Eitle, The EU Patents Package Handbook: A Practioner’s
Guide (Munich: Hoffmann-Eitle, 2014), 34.
61
Hoffmann-Eitle, The EU Patents Package Handbook: A Practioner’s
Guide (Munich: Hoffmann-Eitle, 2014), 93.

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Analysing the reforms: the UPC and the UP 93

in, in the near future.62 So far, no local or regional divisions are

planned for Romania, Bulgaria, Greece, Cyprus, the Czech Repub-
lic, the Slovak Republic, Slovenia or Hungary, which means that
when infringement takes place within these territories, infringement
cases may be filed at the relevant UPC central division.

Assessing the Competence of the UPC

Under Article 32 of the UPC Agreement, the UPC has exclusive

competence with respect to litigation relating to the infringement
and validity of UPs as well as – upon expiry of the transitional
regime (discussed further below) – EPs.63 This includes actions
relating to:

+ claims of patent infringement and related defences

+ claims for the revocation of patents and counterclaims for
revocation
+ claims for declarations of non-infringement
+ claims for provisional and protective measures and injunc-
tions.

With respect to claims for infringement, Articles 25 and 26 of the

UPC Agreement define the infringing acts in the context of direct
and indirect infringement.64 Article 27 of the UPC Agreement lists
the exemptions from patent infringement, including acts done
privately and for non-commercial purposes; acts done for experi-
mental purposes; and acts done in the context of certain tests and

62
A. Johnson, ‘Latest on local and regional divisions’, Bristows (2015),
available at www.bristows.com/articles/latest-on-local-and-regional-divisions-
upc.
63
Articles 3 and 32 UPC Agreement. The UPC may hear litigation
matters cited in Article 32 UPC Agreement such as validity and infringement;
meanwhile, national courts retain the competence regarding litigation matters
not mentioned in Article 32, such as entitlement actions.
64
Under Article 25 UPC Agreement, acts constituting infringement of a
product include making, offering, placing the product on the market, using the
product, importing or storing the product; acts constituting infringement of a
process include using the process or offering the process for use. Under Article
26 UPC Agreement, infringement includes providing the means relating to the
essential element of the invention.

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94 European patent litigation in the shadow of the UPC

trials for medicinal products. Notably, Article 32 of the UPC

Agreement does not cover the majority of licensing agreements, or
disputes over ownership, inventorship or entitlement to the patent,
meaning that these remain within the competence of national
courts. However, in the context of an infringement claim related
defences, such as counter-claims concerning licences, are allowed,
something that is particularly relevant to licences of right and ‘fair
and reasonable’ (FRAND) cases where alleged infringers claim they
are entitled to a patent licence on FRAND terms.65
Concerning the crucial issue of validity under Articles 32(d) and
32(e), a revocation action may be filed at one of the UPC central
divisions (i.e. at either Paris, Munich or London, depending on the
patent’s IPC). The effect of a successful UPC revocation action is
the invalidation of the patent across all SS. It is, therefore, a novel
and highly powerful tool for competitors seeking to invalidate their
competitors’ patents across almost the entire EU; at present, such
actions must be commenced at the various national levels (while
lengthy opposition proceedings may be pending at the EPO).
With regard to claims for declarations of non-infringement, these
are covered by Article 32(b) of the UPC Agreement.66 Such an
action is typically filed by a party seeking to establish that the
party’s actions have not infringed the relevant patent(s). Under the
UPC Rules of Procedure, a party does not need to wait until
he/she/it has been accused of infringement to file a claim for a
declaration of non-infringement.67 Action can be taken as long as
the claimant has contacted the relevant patentee/exclusive licensee,
providing all relevant details, as well as a request for the patentee/
exclusive licensee to acknowledge that the patent does not infringe;
and following this, that the patentee/exclusive licensee has failed to
give written acknowledgement within one month.68 These pro-
visions will enable competing companies to ‘clear the way’ before
they invest in costly R & D and/or marketing of goods. Under

65
Article 32(1)(h) UPC Agreement gives the UPC exclusive jurisdiction
for disputes on the level of the licence fees for ‘licences of right’ under Article
8 UP Regulation.
66
See also Rules 61–74 UPC Rules of Procedure – www.unified-patent-
court.org/images/documents/UPC-Rules-of-Procedure.pdf.
67
Rules 61–74 UPC Rules of Procedure.
68
Rule 61(1)(a–b) UPC Rules of Procedure.

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Analysing the reforms: the UPC and the UP 95

Article 33(4) of the UPC Agreement, an action seeking a declar-

ation of non-infringement must be commenced at the UPC central
division; however, under Article 33(6) if a patentee/exclusive licen-
see commences a patent infringement action at one of the local or
regional divisions within three months of the UPC central division
filing, the UPC central division action will be stayed pending the
outcome of the local/regional decision.
Concerning actions for provisional and protective measures and
injunctions, Articles 32(c) and 62 of the UPC Agreement are highly
relevant. Provisional injunctions may be granted by the UPC to
prevent an imminent act of infringement or to stop an ongoing
one.69 The seizure of allegedly infringing goods – to prevent them
being placed on the market – is also permitted.70 In order to obtain
one of these provisional remedies, a claimant patentee/exclusive
licensee must provide reasonable evidence of actual or imminent
infringement of one or more of its patents. Once a verdict of
infringement has been handed down by the UPC, a permanent
injunction may be granted. With regard to damages/compensation
under Article 32(f) of the UPC Agreement, the key provisions are
found in Article 68 of the same document – in addition to the
injunctive relief, damages may be granted by the UPC.71 Under
the UPC Rules of Procedure, interim damages may be granted.72 In
the context of settlement negotiations between parties concerning
the level of damages, it is worth noting the time limit: an appli-
cation to the UPC for a determination of damages must be filed
within one year of the final decision on the merits.73 Regarding use
of the invention prior to a patent grant under Article 32(g) of the
UPC Agreement, only a claim of compensation may be brought. On
this it is worth noting, however, that the issue of a prior use right is
more commonly a defensive claim than an offensive one.74
Article 8 of the UP Regulation and Article 32(1)(h) of the UPC
Agreement cover actions for compensation for patent licences

69
Article 62(1) UPC Agreement.
70
Article 62(3) UPC Agreement.
71
See also Rule 10(d) UPC Rules of Procedure.
72
Rule 119 UPC Rules of Procedure.
73
Rule 126 UPC Rules of Procedure.
74
Hoffmann-Eitle, The EU Patents Package Handbook: A Practioner’s
Guide (Munich: Hoffmann-Eitle, 2014), 89.

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96 European patent litigation in the shadow of the UPC

where a statement offering licences to all willing parties (in return

for compensation) is filed with the EP. In this context, the UPC may
decide on royalty disputes that occur.75
With respect to the breakdown between the various UPC divi-
sions, Articles 32–33 of the UPC Agreement state that with regard
to first-instance proceedings at the local or regional divisions, the
following types of claims can be filed:

+ actions for patent infringement and related defences

+ actions for provisional and protective measures and injunc-
tions
+ actions for damages or compensation derived from provisional
protection
+ actions relating to prior use
+ counterclaims for revocation in pending infringement cases.

The choice of local or regional divisions is framed by the questions

of:

+ where the infringement has occurred or may occur

+ or, alternatively, where the defendant has a residence or place
of business.

Meanwhile, with respect to the UPC central divisions, Articles

32–33 of the UPC Agreement state that the following claims can be
filed centrally:

+ actions for declarations of non-infringement

+ actions for revocation of patent(s)
+ all actions related to Signatory States without a local division
or regional division.

Thus, if the defendant has no residence/place of business within the

contracting Signatory States of the UPC, the competent court will
be the local or regional division where the (alleged) infringement

75
W. Pors, ‘Property and contractual aspects of unitary patents and of
patents in the UPC system’, EPLAW Patent Blog (2014), 1, 2, available at
www.eplawpatentblog.com /2014 /December / Wouter%20Pors%20Property%20
and%20Contractual.pdf.

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Analysing the reforms: the UPC and the UP 97

has occurred. Alternatively, in such circumstances the action may

be filed at the central division; and actions may also be filed at the
central division if there is no local or regional division covering the
territory of the infringement. This means that in some cases
patentees will have the opportunity to bypass the local/regional
divisions entirely, and proceed immediately to the relevant central
division. Despite this, given the remit of the UPC local/regional
divisions to zero-in on infringement issues, it seems likely that
these divisions of the UPC will handle the majority of infringement
actions.
Nonetheless, it is worth noting that in accordance with Article
33(2) of the UPC Agreement, if the case is already pending at one
division, any other legal dispute which occurs between the same
parties, concerning the same patent, must be filed at the same
division. For example, it is not possible to file a claim for
non-infringement or for revocation of a patent at the UPC central
division if an action for infringement between the same parties
concerning the same patent(s) has already been brought before one
of the UPC local or regional divisions. In such circumstances, under
Article 33(4) of the UPC Agreement a claim for non-infringement
or for revocation of a patent can only be filed at the same local or
regional division as the ongoing/pending infringement action. In
addition, under the UPC Rules of Procedure a legal party who
considers that there is a looming possibility that an application
seeking provisional measures could be taken against him (as a
defendant at the UPC) may file a protective letter, in the language
of the patent, with the UPC Registry.76 Moreover, under Article
33(6) of the UPC Agreement an action for a declaration of
non-infringement that is pending at the central division will be
stayed if an infringement action involving the same parties concern-
ing the same patent is filed at a local/regional division within three
months.
A defendant may seek to challenge the UPC’s competence and
jurisdiction in order to try to prevent the UPC case from proceed-
ing. Under the UPC Rules of Procedure, any objection to the UPC’s
international jurisdiction, its internal competence or the particular

76
Rule 207 UPC Rules of Procedure.

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98 European patent litigation in the shadow of the UPC

division where suit is filed must be submitted within one month of

the claim being served on the defendant.77

Filing a UPC Action and the Issue of Bifurcation of Proceedings

A patent infringement action may be filed at the UPC local/regional

division where the infringement has occurred, or where the defend-
ant is domiciled; and as noted earlier in this chapter, in certain
circumstances an infringement case can be filed at the technically
competent section of the UPC central division in Paris, London or
Munich.78
Due to the limits on the written, interim and oral stages of
proceedings, the expected time frame of a UPC action, from case
filing until a first-instance decision is rendered, is approximately 12
months.79 In other words, the UPC has been set up so that it can
reach decisions concerning infringement quickly – for instance, it is
envisaged that the UPC’s first-instance ruling on the merits will be
handed down in written form within six weeks of the oral hearing.80
In some cases, the UPC may, in fact, give a decision on the merits
of the case immediately after the hearing’s conclusion, and then
give its reasons subsequently.81
Meanwhile, a standalone patent revocation action may be filed at
the technically competent section of the UPC central division in
Paris, London or Munich; notably, however, if revocation is filed as
a counterclaim to an initial infringement claim, it may be filed at
the UPC local/regional division where the infringement action was

77
Rule 19 UPC Rules of Procedure.
78
See Article 32(1)(a) UPC Agreement in conjunction with Article 33(1)
UPC Agreement. See also generally K. Cremers, M. Ernicke, D. Harhoff, C.
Helmers, G. Licht, L. McDonagh, et al. ‘Patent litigation in Europe’, ZEW
Discussion Paper No. 13-07 (2013), 1.
79
Rule 10 UPC Rules of Procedure. See also K. Mooney, ‘The new
European Unified Patent Court and the unitary patent’, presentation given at
the UCL Institute of Brand and Innovation Law, George Washington Uni-
versity’s Faculty of Law, GSMA, ITU and ETSI conference ‘Patents in
Telecoms’ (2015), available at www.ucl.ac.uk/laws/patents-in-telecoms-2015/
docs/02_judges_0915_mooney.pdf.
80
Rule 118(6) UPC Rules of Procedure.
81
Rule 118(7) UPC Rules of Procedure.

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Analysing the reforms: the UPC and the UP 99

commenced and/or is pending.82 In this scenario – where a

counterclaim for revocation has been filed at the UPC local/regional
division – the local/regional division court panel has three possible
options: first, it may decide to proceed with both the action for
infringement and the revocation counterclaim, issuing rulings on
both issues; second, it may refer the counterclaim for revocation to
the UPC central division – and either suspend or proceed with the
action for infringement; or third, with the agreement of the parties,
it may refer the case to the central division.83
Regarding the first option – where the local/regional division
decides to go ahead and hear arguments concerning both infringe-
ment and validity – a technically qualified judge will be allocated to
the panel by the CFI president (at the request of the judge-
rapporteur).84
The second option is the one that has caused the most contro-
versy in discussions over the working of the UPC – the reason
being that it gives the local/regional division court panel the option
to bifurcate the proceedings into (i) an infringement case, to be
heard and decided at the UPC local/regional level, and (ii) a
revocation case, to be heard and decided at the UPC central
division. Some patent litigants are likely to be wary of bifurcation;
after all, the system is utilized by very few European jurisdictions,
and of those that are major patent jurisdictions, only Germany uses
it.85 Yet, on the other hand, due to the fact that Germany is the most
prominent jurisdiction, many patent litigants will have some expe-
rience of the system. Moreover, bifurcated patent proceedings are
utilized in some major patent jurisdictions outside the EU, includ-
ing China and South Korea, so parties with experience of using the
litigation systems in these territories may find bifurcation less
intimidating. Finally, it is worth emphasizing that in Germany
bifurcation is mandatory; within the UPC, by contrast, bifurcation

82
See Articles 32(1)(d–e) and 33(3) UPC Agreement. See also generally
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L. McDonagh, et
al. ‘Patent litigation in Europe’, ZEW Discussion Paper No. 13-07 (2013), 1.
83
See Article 33(3) UPC Agreement.
84
Rule 37(3) UPC Rules of Procedure. Of course, if a technically
qualified judge has already been allocated to the panel under Rule 33 UPC
Rules of Procedure, there is no need to do this.
85
In Europe, bifurcation occurs in Austria, Germany and Hungary.
Worldwide, other countries that bifurcate include China and South Korea.

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100 European patent litigation in the shadow of the UPC

will be optional, and for this reason is unlikely to occur as often as

it does in Germany.86

The Procedural Stages of a UPC Action

Under Article 52(1) of the UPC Agreement, a case at the UPC will
typically involve three procedural stages – written, interim and oral.
This is a ‘front-loaded’ process, with the plaintiff/claimant expected
to have a well set-out case ready from the first filing.87
Under the UPC Rules of Procedure, the written stage is to be
comprised of four filings: (i) a statement of claim; (ii) a statement
of defence; (iii) a reply to the statement of defence; and (iv) a
rejoinder to the reply.88 A counterclaim for revocation of the patent
may be filed as part of the statement of defence.89 The written stage
is expected to last approximately six months.
Working through the processes of the interim procedure – lasting
approximately three months – enables the judge-rapporteur (the
reporting judge) to prepare for the oral procedure. During this
interim period, the judge-rapporteur may require the parties to
clarify specific issues/points/questions, produce evidence and file
specific documents relating to the upcoming oral hearing.90 Under
Rule 101 of the UPC Rules of Procedure, this stage may also
involve one or more interim conferences; such a conference should
usually take place via telephone or video technology, but as an
alternative it can take place in court, publicly, with the parties
appearing in person, in circumstances where there is agreement
between the parties and the judge-rapporteur about this (confiden-
tiality is at the discretion of the court).91
Regarding the oral procedure, this primarily consists of an oral
hearing which is envisaged to be completed within one day (general

86
Article 37(4) UPC Rules of Procedure.
87
Hoffmann-Eitle, The EU Patents Package Handbook: A Practioner’s
Guide (Munich: Hoffmann-Eitle, 2014), 33.
88
Rule 12(1) UPC Rules of Procedure.
89
Rule 12(2) UPC Rules of Procedure.
90
Rule 101 UPC Rules of Procedure.
91
Rule 105 UPC Rules of Procedure.

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Analysing the reforms: the UPC and the UP 101

rule).92 To help keep this one-day limit in place, in advance of the

oral hearing the presiding judge has the power to set relevant time
limits with respect to the length of the parties’ oral submissions.
The oral hearing will be recorded for posterity (via audio or video
equipment).93
It is during the interim stage that decisions and orders will be
made with respect to whether – and to what extent – witnesses and
(scientific) experts ought to be heard during the oral hearing.94
Then, during the oral hearing, acting under the presiding judge –
along with the judges of the panel and the representatives of each
party – questions will be asked of the ordered witnesses and
experts.95 In contrast with the UK, the use of witness testimony and
cross-examination of experts will be severely limited in oral hear-
ings at the UPC. In this sense, the procedures are closer to those of
the German and Dutch jurisdictions.
At the UPC, there is no general wide rule of disclosure compar-
able with that found in the UK – on this, the UPC procedures more
closely mirror those of the German, French and Dutch courts. Thus,
in the context of the UPC the acceptable evidence is to be located
in the submissions made by each party, and gathered via the making
of requests for information, as well as via inspections and the
provision of documents (somewhat akin to the French saisie
procedures), as well as via the use of comparative experiments and
the gathering of sworn evidentiary statements/affidavits.96 It seems
likely, however, that the saisie-style procedures at the UPC will be
more burdensome for patentees to avail of than currently is the case
in France.97
Overall, it is notable that the UPC Rules of Procedure leave the
judges ‘considerable discretion’ with respect to the conduct of
proceedings.98 As discussed further in Chapter 4, this means that

92
Rule 113 UPC Rules of Procedure.
93
Rule 115 UPC Rules of Procedure.
94
Rule 112(2)(b) UPC Rules of Procedure.
95
Rule 112(3–5) UPC Rules of Procedure.
96
Article 53(1) UPC Agreement and Rules 192–198 UPC Rules of
Procedure.
97
A.-L. Bouzanquet, A. Bowler and A. Johnson, ‘The role of the saisie in
the UPC’, Bristows (2013) – www.bristowsupc.com/commentary/saisie-upc/.
98
Hoffmann-Eitle, The EU Patents Package Handbook: A Practioner’s
Guide (Munich: Hoffmann-Eitle, 2014), 33.

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102 European patent litigation in the shadow of the UPC

the make-up of the judicial panels, as well as their individual levels

of expertise and experience, will be crucial for ensuring consistency
of decision making within the UPC. In terms of the nationalities
and experience of judges, it is quite possible that experienced
judges from, for example, Germany, the UK, France or the Nether-
lands will seek to draw from the case law of their home juris-
dictions; on the other hand, for judges coming from territories that
do not have a long history of patent litigation or much current case
law, a different challenge will arise – that of inexperience. Main-
taining judicial consistency will be particularly crucial with respect
to infringement, since while there is a body of EPO jurisprudence
on validity questions that the UPC judges can follow, there is no
equivalent centralized body of jurisprudence concerning infringe-
ment (which, under the EPC, has remained within the remit of
national courts).

Appeals to the UPC Court of Appeal (Luxembourg)

With respect to appeals, an appeal against a decision of the Court of
First Instance – whether from a local, regional or central division –
must be filed within a two month time limit post-notification of the
UPC CFI decision.99 As outlined in Article 73(3), appeals are
available both on points of law and with respect to factual and
evidentiary matters. Nonetheless, an appellant may only be allowed
to introduce new facts/evidence if, as stated in Article 73(4), the
appellant could not have been reasonably expected to have submit-
ted the relevant ‘new’ facts/evidence at the time of the CFI
proceedings.

Supplementary Protection Certificates in the context of the UP

and the UPC
Supplementary Protection Certificates (SPCs) were introduced
under the auspices of EU law in order to compensate patentees
where they had experienced the loss of an effective patent term due
to a delay in obtaining the crucial EU marketing authorization for a
pharmaceutical product, without which a product cannot be put on

99
Article 73(1) UPC Agreement.

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Analysing the reforms: the UPC and the UP 103

the EU market.100 The EU SPC system allows for the national

patent offices of EU MS to grant SPCs for both national patents and
for EPs validated within that MS. With respect to the UPC, of
relevance is an SPC that is based on either an existing or a
prospective EP; and second, an SPC that is based on a prospective
UP.
Regarding an SPC which refers to an underlying EP, once the
UPC is up and running the SPC – like the underlying EP – will
come within the UPC’s jurisdiction (though as noted below, the
opt-out possibility is relevant during the transition period).101
For UPs, any associated SPCs will come under the remit of the
UPC. However, due to the terms of the EU regulation, it appears
that despite their unitary nature, SPCs for UPs will have to be
granted at a national level.102 At some point, the EPC might be
amended to allow the EPO to grant SPCs, but for now that is not on
the cards.

Opt-Out of EPs and Related SPCs from the UPC’s Jurisdiction

As noted earlier, in accordance with Article 83 of the UPC

Agreement, all existing EPs and prospective EPs that are applied
for within the transitional period can be opted out of the UPC via
application to the UPC Registry.103 The EP opt-out will be applic-
able to all national parts of the EP in all relevant UPC Agreement
Signatory States.104 The opt-out will be registered only if there is
no existing/pending UPC action, and is expected to last for the
lifetime of the patent.105

100
Regulation 469/2009 concerning the supplementary protection certifi-
cate for medicinal products, OJ L 152 (2009) and Regulation 1610/1996
concerning the creation of a supplementary protection certificate for plant
protection products, OJ L 198/30 (1996).
101
P. England, ‘In? Out? What’s it all about? Patent opt-out and with-
drawal in the UPC’, Journal of Intellectual Property Law & Practice 9 (2014),
10, 10–12.
102
L. Reynolds, ‘SPCs and the UPC: current status’, Bristows (2015),
available at www.bristowsupc.com/commentary/spcs-and-the-upc/.
103
Article 83(3) UPC Agreement.
104
Rule 5(1–13) UPC Rules of Procedure.
105
Rule 5(5) UPC Rules of Procedure.

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104 European patent litigation in the shadow of the UPC

To ensure patentees can avoid the UPC’s jurisdiction from day

one – should they choose to – opt-outs may be accepted by the
EPO before the UPC Agreement is ratified and enters into force;
these opt-out notices will then be registered with the UPC Registry
immediately post-ratification, when the UPC is up and running.106
The opt-out of an EP/SPC may be withdrawn at any time – even
after the transition period ends – an act which would re-establish
the UPC’s jurisdiction regarding that EP/SPC.107 Nevertheless, the
withdrawal of the UPC opt-out will not be allowed if there is an
existing/pending action at a national court.108 Thinking about this in
terms of eventual patent term, in practice this means that if an SPC
for an ‘opted out’ EP is applied for in, for example, 2020, it would
still be litigated in the national system until its expiry, which may
not come until 2045. This neatly illustrates how long the new
system may take before it fully unifies the system of European
patent litigation.109 It is not envisaged that patentees will be able to
opt out, opt back in and then opt out a second time.110 Despite
initial proposals, there will not be a fee to opt out an EP from the
UPC’s jurisdiction (the possible impact of the initial proposed
opt-out fee is discussed in detail in light of the empirical data in
Chapter 4).111
It is important to take note of the effect of the UPC opt-out on
the substantive law to be applied by the relevant national court:
even if an EP/SPC is opted out of the UPC, the substantive law to
be applied by the national court is intended to be the same as would
have been applied by the UPC, i.e. decisions at the national level

106
Rule 5(9) UPC Rules of Procedure.
107
Rule 5(6) UPC Rules of Procedure.
108
Article 87(4) UPC Agreement.
109
P. England, ‘In? Out? What’s it all about? Patent opt-out and with-
drawal in the UPC’, Journal of Intellectual Property Law & Practice 9 (2014),
10–17.
110
Hoffmann-Eitle, The EU Patents Package Handbook: A Practioner’s
Guide (Munich: Hoffmann-Eitle, 2014), 80.
111
A. Johnson, ‘Opt-out fee for future Unified Patent Court is (unsurpris-
ingly) much too high’, Kluwer Patent Blog (2015), available at www.
kluwerpatentblog.com / 2015/05 /15 / opt-out-fee-for-future-unified-patent-court-
is-unsurprisingly-much-too-high/.

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Analysing the reforms: the UPC and the UP 105

will be made based on the new substantive law, not on the prior
national jurisprudence concerning infringement.112

Restraining Infringement: The Powers of the UPC

Under the UPC Agreement, the UPC has the power to enjoin an
infringer from direct infringement (Article 25) as well as from
indirect infringement (Article 26). With respect to direct infringe-
ment, the infringer can be enjoined from making, offering, using
and/or placing on the market a product covered by the respective
patent-in-suit, or from importing or storing the patented product for
any of these purposes.113 If the infringed patent covers a process,
rather than a product, the UPC can enjoin the infringer from using
the patented process, as well as from offering the patented process
(if the infringer knows or ought to have known that use of the
process is prohibited); in addition, the infringer can be enjoined
from offering, using, importing and/or placing on the market
products directly obtained via the patented process. With regard to
indirect infringement, the UPC has the power to enjoin the indirect
infringer from supplying, or offering to supply, any means relating
to an essential element of the patented invention (if the means are
suitable and intended to operate, put into effect or work the
invention).114
Effectively, the UPC will provide patentees with the ability to
obtain an injunction against an infringer that is enforceable in all 25
Signatory States of the UPC. This will no doubt prove to be a
potent remedy. Conversely, it will be possible for competitors to
seek to revoke a patentee’s patent centrally, with the effect of that
single judgment being that the patent is no longer valid within all
25 Signatory States. Both of these options have received much
academic and practitioner discussion recently, and they are analysed
in detail in the next chapter.

112
Articles 25–30 UPC Agreement.
113
Article 25 UPC Agreement.
114
Article 26 UPC Agreement.

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106 European patent litigation in the shadow of the UPC

The UPC Judiciary

The make-up of the UPC judiciary is likely to prove to be one of

the key factors that will determine the potential success of the court
system. The existence of multi-judge panels will be the norm within
the UPC, though in some circumstances a case may be decided by
a single judge.115
Under Article 18(3) of the UPC Agreement, the president of the
CFI will allot judges from an agreed ‘pool of judges’ to the various
CFI divisions based on a number of key criteria. In accordance with
Articles 15(1) and 18(1–2) of the UPC Agreement, the UPC judicial
panels are required to be multi-national and to consist of judges
who are both legally and technically qualified, as well as being
competent and experienced in the area of patent litigation.116 With
respect to CFI courts, the judicial panels of both the local and
regional divisions will be formed of three legally qualified judges;
meanwhile, at the three outposts of the CFI central division – Paris,
London and Munich – there will also be three-person judicial
panels, comprised of two legally qualified judges and a single
technical judge. Additionally, the chairman of a judicial panel must
always be a judge who is legally qualified.117
For second-instance decisions (Court of Appeal), the panels will
comprise of a total of five persons – three legally qualified judges
(all from different Signatory States) and two technically qualified
judges, who will come from the UPC pool of judges.118 The Court
of Appeal’s panels will be chaired by a legally qualified judge. If a
Court of Appeal case is deemed to be of ‘exceptional importance’,
it may be heard by the ‘full court’, i.e. all judges of the Court of
Appeal.119 Exceptional importance is not defined in the UPC

115
Article 8(7) UPC Agreement and Articles 19(3) and 21(3) Statute of the
Unified Patent Court (‘UPC Statute’), available at http://documents.epo.org/
projects / babylon / eponet . nsf / 0 /A1080B83447CB9DDC1257B36005AAAB8 /
$File/upc_agreement_en.pdf.
116
See also Articles 8(8) and 9(3) UPC Agreement.
117
Articles 8(8) and 9(1) UPC Agreement.
118
Article 9(1) UPC Agreement.
119
Article 21(2) UPC Statute and Article 35(3) UPC Agreement.

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Analysing the reforms: the UPC and the UP 107

Agreement or the UPC Statute, so it is a potential source of

ambiguity and will need to be interpreted by the courts.120
With respect to the local and regional divisions, each judicial
panel will feature at least one judge from the UPC pool of judges
who is not a national of the UPC Signatory State where the court is
located. In fact, there are circumstances where a local division may
feature only one national judge.121 The full Article 8 criteria are as
follows:

+ For local divisions in UPC member states that have fewer than
50 patent litigation cases per year, there will be one national
judge + two judges from the UPC pool.
+ For local divisions in UPC member states that have more than
50 patent litigation cases per year, there will be two national
judges + one judge from the UPC pool.
+ For all regional divisions, there will be two national judges
(from the Signatory States comprising the regional division) +
one judge from the UPC pool.

The panel itself may decide, or a litigating party may request, that
an additional technically qualified judge be allocated from the UPC
pool of judges to join a local/regional division judicial panel.122
Judges will spend a period of one year on a particular division
panel, as determined by the presiding judge.123 Consequently,
litigating parties are likely to have ‘at least some predictability in
advance with regard to the question of which panel or which judge
will hear the case’.124 With respect to litigant choice of venue, this
predictability may contribute to the ‘forum shopping’ issue, dis-
cussed further in the context of the empirical data in Chapter 4.
In light of the above rules, and due to the fact that the
overwhelming proportion of European patent litigation takes place
in Germany, there is no doubt that two out of the three judges on

120
Hoffmann-Eitle, The EU Patents Package Handbook: A Practioner’s
Guide (Munich: Hoffmann-Eitle, 2014), 98.
121
Article 8 UPC Agreement.
122
Article 8(5) UPC Agreement.
123
Rule 345(1–3) UPC Rules of Procedure.
124
Hoffmann-Eitle, The EU Patents Package Handbook: A Practioner’s
Guide (Munich: Hoffmann-Eitle, 2014), 97.

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108 European patent litigation in the shadow of the UPC

the four planned UPC local division panels in Germany will be

German. This will also be the case, for example, at the UK’s local
division, as it is a jurisdiction which, although it has much less
patent litigation than Germany, nonetheless has well over 50 patent
cases filed each year at the Patents Court and IPEC.125 This will not
be the case for countries with less popular patent courts: Ireland, for
example, is likely to have only one national judge on its local
division panel, as it does not feature more than 50 patent cases filed
per year.126
For central divisions, the make-up of the three-person judicial
panels, comprised of two legally qualified judges and a single
technical judge, will not be dependent on the location of the host
country – these judges will be drawn from the general UPC pool of
judges.127
All ‘legally qualified’ judges must be of sufficient qualification to
be appointed as a judge in one of the UPC MS, and all ‘technically
qualified’ judges must have both a university degree and sufficient
technological and litigation expertise.128 Since the positions were
first advertised, many applications to be appointed to the UPC pool
of judges have been received by the UPC Advisory Committee –
they are at time of writing being processed before appointments are
made.129
Judges will be trained at the UPC Centre in Budapest, Hungary.
Each judge must have a strong working ability to deal with (at
least) one of the EPO’s official languages, i.e. English, German or
French.130 A judge’s term will be six years, though reappointments
are a possibility.131 Furthermore, UPC judges will be allowed to act

125
C. Helmers, Y. Lefouili and L. McDonagh, ‘Examining patent cases at
the Patents Court and Intellectual Property Enterprise Court 2007–2013’, A
Report Commissioned by the UK Intellectual Property Office (March 2015),
available at www.gov.uk/government/publications/examining-patent-cases-at-
the-patents-court-and-ipec-2007-2013.
126
A. Casey, ‘Unified Patent Court (UPC) and Ireland’ (2015), available at
http://frkelly.com/unified-patent-court-upc-ireland.
127
Articles 8(6), 18(3) and Article 32(1)(i) UPC Agreement.
128
Article 15(2–3) UPC Agreement.
129
Articles 16(1–2) and 18 UPC Agreement.
130
Article 2(2) UPC Statute.
131
Article 4(1) UPC Statute.

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Analysing the reforms: the UPC and the UP 109

as judges in their respective national jurisdictions concurrent with

their UPC role.132

Language of Proceedings

At UPC local divisions, the language of proceedings will be the

official language of the relevant UPC MS where the division is
located.133 This will generally be the case for the regional divisions
as well, though, as an alternative, the language of proceedings at a
regional division may be one of the official languages of any of the
UPC MS that share that particular regional division.
Furthermore, there are a number of other possibilities regarding
the language of proceedings: (i) local or regional divisions may
designate one of the EPO official languages – English, German or
French – as the language of proceedings;134 (ii) the UPC judicial
panel in agreement with the case parties may also decide, for
example, on the basis of fairness and convenience that the language
of the patent-in-suit ought to be the language of proceedings (the
case parties may also request the case to be referred to the relevant
central division if there is no agreement with the judicial panel on
this point);135 and (iii) if only one of the case parties requests a
language change, the President of the Court of First Instance, taking
into account all the relevant circumstances, issues of fairness and
having heard the views of the other party to the case and the
judicial panel, may make the decision that the language of the
patent ought to be used as the language of proceedings.136
The language situation is much more straightforward at the UPC
central division; regardless of whether the case is heard in Paris,
Munich or London, the language of the patent will be the language
of proceedings.137 Since most EPO-granted patents are in English,

132
Article 17(3–4) UPC Agreement. In addition, patent attorneys will be
allowed to act as technically qualified part-time UPC judges, where appropri-
ate.
133
Article 49(1) UPC Agreement.
134
Article 49(2) UPC Agreement.
135
Article 49(3–4) UPC Agreement.
136
Article 49(5) UPC Agreement.
137
Article 49(6) UPC Agreement.

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110 European patent litigation in the shadow of the UPC

this means that English will be the most commonly used language
at the central division.138
At the Court of Appeal, the language of proceedings will be the
same as the language used in the Court of First Instance – whether
the local/regional division or the central division – unless the case
parties are in agreement that the language of proceedings at the
Court of Appeal ought to be the language of the patent.139

Jurisdiction and the Transition Period

With respect to the UPC’s jurisdiction, there will be a transition

period of 7 years (potentially extendable to up to 14 years) whereby
national courts will share jurisdiction with the UPC over EPs/
SPCs.140 Furthermore, during the transition period patentees who
currently hold EPs or who apply to obtain EPs during this time will
be able to opt out of the UPC system, and instead continue to use
the current system of national litigation of EP validations, for
example, EP (UK), EP (DE).141 As discussed later on in this
chapter, and in Chapter 4, while the provision of a transitional
period is understandable given the fundamental nature of the
reforms, the result will be that the coming into being of the UPC
will initially result in an even more fragmented litigation system for
EPs than exists at the present time, with the additional layer of UPC
litigation coming on top of the current national systems. It will also
result, at least for the transitional period, in some ungainly legal
complexities, including the issue of the choice of venue under the
Brussels I Regulation discussed earlier in this chapter, and the
substantive law to be applied by national courts for EPs that have
been opted out of the UPC.

138
A. Johnson, ‘Latest on local and regional divisions’, Bristows (2015),
available at www.bristows.com/articles/latest-on-local-and-regional-divisions-
upc.
139
Article 50 UPC Agreement.
140
Article 83(1) UPC Agreement.
141
Article 83(3) UPC Agreement.

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Analysing the reforms: the UPC and the UP 111

THE EUROPEAN PATENT WITH UNITARY EFFECT

(UNITARY PATENT)
Currently, there is co-existence between (i) national patents, granted
by national patent offices within Europe (e.g. GBs, DEs, NLs and
FRs) and (ii) European patents (EPs) granted by the EPO with one
or more national variation(s). It is important to emphasize that the
European patent with unitary effect (unitary patent, or UP) will not
replace, but will instead complement, the current system of patent-
ing in Europe; in other words, the primary benefit of the UP will be
that it provides an additional option for protection, and one that is
broader in scope than any of the existing options.142
What this means is that businesses and inventors will soon face a
choice between three different ways of protecting their patents: (i)
the national route (e.g. GB, DE, FR, NL); (ii) the traditional
EPO-granted European Patent (EP) validated in individual terri-
tories; or (iii) the new EPO-granted European Patent with unitary
effect (UP).143 Crucially, as explored earlier on in this chapter, the
choice that patentees make, with respect to whether to protect their
inventions via national patents, EPs or UPs, will affect the potential
litigation venues – something particularly important during the
UPC transition period.
The way the new UP option will work is as follows: once a
patentee’s application is granted by the EPO, the patentee may
choose to obtain a UP rather than the traditional EP. Thus, in order
to get unitary protection, a prospective patentee must apply to the
EPO in the usual way, and then, within one month of grant, request
that the patent be registered as a UP.144
During the transitional period, the patentee will, along with the
UP request, need to provide a translation of the patent, something
discussed further on in this chapter. From the date the relevant
Regulation becomes ‘live’, i.e. when the UPC Agreement has been

142
Articles 3 and 5 UP Regulation. See also generally J. Pila and C.
Wadlow (eds), The Unitary EU Patent System (Oxford: Hart, 2015).
143
A. Kaisi, ‘Finally a single European right for the EU? An analysis of
the substantive provisions of the European patent with unitary effect’, Euro-
pean Intellectual Property Review 36 (2014), 170.
144
Article 9(1)(g) UP Regulation.

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112 European patent litigation in the shadow of the UPC

ratified and is in full force, any new EPO-granted patent may be

registered as a UP.145
Choosing UP protection will eliminate the need to obtain separ-
ate validations from each MS where protection is sought – some-
thing which of course removes the need to pay separate translation/
validation fees to the various MS national patent offices.146

Addressing the UP’s Territorial Scope

The issue of the coverage of the UP is framed by the fact that the
establishment of the UP falls within an area of European Union
policy – in fact, because the new UP is an EP with unitary effect
across many jurisdictions, a state must be a member of both the
EPC and the EU in order to join up with the EU Enhanced
Cooperation procedure and ratify the UPC Agreement. Due to the
consequences of Opinion 1/09, the UPC is considered to be a court
‘common to’ the EU MS – and only EU MS may join the new
system.147 Therefore, signatories to the EPC that are not EU MS –
including, for example, Switzerland, Turkey and Iceland – will not
be part of the new system.148 This also means that if the UK pulls
out of the EU following the referendum on membership in June
2016, it will no longer be able to participate.
The UP will facilitate patent protection over 25 out of 28 EU
member states on the basis of a single application to the EPO –
Spain and Croatia are definitively outside the UP’s coverage at
present; while Poland initially participated in the UP Enhanced
Cooperation procedure but has since decided not to become an SS
of the UPC Agreement, which has had a knock-on effect on the
UP’s coverage in Poland; and Italy, once a hold-out country,
formally joined the UP in late 2015.149

145
Hoffmann-Eitle, The EU Patents Package Handbook: A Practioner’s
Guide (Munich: Hoffmann-Eitle, 2014), 21.
146
The loss of revenue that will potentially be suffered by national patent
offices will be set off via a system of revenue-sharing of UP fees between the
EPO and the various national patent offices.
147
CJEU, Opinion 1/09, 8 March 2011, para. 82, available at http://
ec.europa.eu/dgs/legal_service/arrets/09a001_en.pdf.
148
CJEU, Opinion 1/09, 8 March 2011, para. 82, available at http://
ec.europa.eu/dgs/legal_service/arrets/09a001_en.pdf.
149
Http://europa.eu/rapid/press-release_MEX-15-5748_en.htm.

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Analysing the reforms: the UPC and the UP 113

Importantly, however, in practice the UP’s territorial scope is to

some extent dependent on the ratification of the UPC Agreement:
once the minimum 13 (3 + 10) SS ratify the UPC Agreement, UPs
may be registered at the EPO. However, since the system will come
into force on the first day of the fourth month following the
requisite 13th ratification, the initial territorial scope of the UP may
be limited to those SS that have already ratified.150 Post-grant, there
are two key dates for UP validation: (i) the date of application for
registration as such at the EPO and (ii) the date of the UP
registration itself. The UP will be valid in all Signatory States (i)
that have joined the EU Enhanced Cooperation procedure at the
time of application for UP registration; and (ii) where the UPC
Agreement is in force on the date of registration.151
This is of concern in the sense that it is quite possible that there
will be some lag between the initial ratifying Signatory States –
such as Austria, the first to ratify, as well as the UK, Germany and
France – and the later ratifying Signatory States, such as Ireland,
which for constitutional reasons will have to hold a referendum (not
yet scheduled) in order to ratify the UPC Agreement. This is
potentially significant because it is understood that the territorial
scope of a UP ‘will not subsequently be extended’ when the UPC
Agreement is ratified by later Signatory States.152 For this reason,
patentees may seek to delay the granting of forthcoming patents by
the EPO until full 25 UPC Agreement Signatory State ratification.
To avoid this scenario, and to decrease unnecessary complexity
within the system, it is hoped that the requisite 13th ratification
happens concurrently with all other MS ratifications, or as soon as
possible thereafter. Also worth bearing in mind is the fact that even
after the UPC Agreement is ratified by the requisite 13 Signatory
States, for states that ratify at a later date, the UPC Agreement will
only come into force on the first day of the fourth month after
ratification. One final note is worth reiterating: for EPO-granted

150
Articles 84, 85 and 89 UPC Agreement.
151
Articles 2(a) and 18(2) UP Regulation.
152
Hoffmann-Eitle, The EU Patents Package Handbook: A Practioner’s
Guide (Munich: Hoffmann-Eitle, 2014), 22.

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114 European patent litigation in the shadow of the UPC

patents that are intended to cover EPC jurisdictions such as Spain

or Switzerland, national validation will still be required even where
unitary protection has been obtained for the participating EU
member states.

Unitary effect
Once registered, a UP will have unitary effect in all participating
EU member states from the date of publication of the grant in the
European Patent Bulletin.153 In contrast to EPO-granted EPs –
which are subject to national laws concerning infringement in the
member states of the EPC where they are validated – the UP will be
subject to the same legal conditions in all UPC Signatory States –
at the various local, regional and central divisions.154 The issues of
validity and infringement of UPs will be subject to the UPC’s
exclusive jurisdiction and will be considered under the UPC’s
substantive law, as discussed earlier on in this chapter. When a UP
lapses, or is revoked, limited or transferred, this will have unitary
effect in all Signatory States where it is valid.155 Notably, however,
due to the fact that licensing is not entirely within the UPC’s
exclusive jurisdiction, patent licences concerning UPs may be
limited to certain territories.156 Oppositions to UPs will occur in
exactly the same way as current oppositions to EPs – they must be
filed with the EPO.157

Translations
A central aim of the UP’s existence is to eliminate the need for
multiple post-grant patent validations/translations in Europe. The
current cost to validate and translate an EP across all EU territories
is very high, especially when compared to the equivalent costs in
other large markets such as the USA.158 The various procedural fees
for applying for, and receiving, an EP from the EPO total €4045

153
Article 4(1) UP Regulation.
154
Article 2(2) EPC and Article 64(1) EPC.
155
Article 3(2) UP Regulation.
156
Hoffmann-Eitle, The EU Patents Package Handbook: A Practioner’s
Guide (Munich: Hoffmann-Eitle, 2014), 23.
157
Articles 99–105b EPC.
158
EU Commission Staff Working Paper (Impact Assessment) SEC(2011)
482/2 (2011), 1 – http://ec.europa.eu/internal_market/indprop/docs/patent/201
10413-impact-assessment_en.pdf.

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Analysing the reforms: the UPC and the UP 115

(online filing).159 Once granted, the cost of validating an EP in 27

EU MS (not including Croatia) is estimated at €28,074, giving an
overall cost total of €32,119, largely due to the translation costs.160
The UP option eliminates these additional post-grant costs.
However, during the UP transition period, expected to be 6 or 12
years,161 a post-grant full patent translation – which in the UP/UPC
context will not have legal standing, but will be informational in
nature – will still be required for UPs.162 During the UP transition
period, if the language of application/grant is German or French, a
patent translation into English will be required; if the application/
granted patent is in English, a translation into any EU official
language will suffice (including, interestingly, a language of a
non-Signatory State, such as Spanish or Polish). At present, around
75% of EPs are in the English language, so it is likely this high
proportion will continue, and may even increase, during the transi-
tion period. By applying for a patent to be granted in English, the
patentee could choose to then nominate one of the non-Signatory
State languages – Spanish or Polish – and, thus, can use the
translation to validate the patent as an EP within that territory. On
the other hand, given the strength of German patent litigation, and
the fact that this is expected to continue at Germany’s four UPC
local divisions, it may make sense for patentees who have filed in
English to provide the additional translation in German.
Even after the transition period, translations may occasionally be
required. With regard to litigation, it must be noted that during
proceedings a court or an alleged infringer can request a translation
of the patent.163 Moreover, a translation of the UP may be required

159
EU Commission Staff Working Paper (Impact Assessment) SEC(2011)
482/2 (2011), 1, 16.
160
EU Commission Staff Working Paper (Impact Assessment) SEC(2011)
482/2 (2011), 1, 16.
161
The transition period is expected to last until patent machine trans-
lations can be produced to a sufficiently high quality, something the EPO and
Google are currently working on.
162
Articles 6(1), 6(3) and 6(5) Translation Regulation.
163
Article 4 Translation Regulation.

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116 European patent litigation in the shadow of the UPC

when enforcing the patent in circumstances where the UPC pro-

ceedings ‘are conducted in a language other than the language of
the granted patent and the submitted translation’.164
Leaving aside litigation-required translations, during the transi-
tion period the total cost of the UP is estimated to be €6425
(covering the EPO procedural cost and the cost of one translation);
whereas it will be €4045 after the transition period (covering solely
the EPO’s procedural costs). Furthermore, for EU-based natural
persons (individual inventors), SMEs, non-profit organizations,
universities and public research facilities, there will be a
compensation/reimbursement scheme where applications are filed
in an EU official language that is not English, German or French.165
Thus, there is no question that by largely eliminating the need for
translations the UP will in fact be much cheaper to obtain than the
traditional EP validated in every EU territory.
Yet, it is worth bearing in mind that only around 2% of all EPs
are validated in every EU MS (about 1,000 out of the approxi-
mately 50,000 annually validated EPs); meanwhile, 8% of EPs are
validated in 13 EU MS (around 4,000), with 50% validated only in
Germany, the UK and France (approximately 25,000).166 Since
most patents are validated only in these three major territories, any
analysis of the potential cost savings of the UP with respect to
translations – as well as with regard to renewal fees (discussed
further later on) – must take this into account. Moreover, it has been
suggested that the translation costs for obtaining a UP would be
more expensive than obtaining an EP with national validations in
Germany, France and the UK, because post-London Agreement,
translations are not required for these territories.167

UP renewal fees
On the subject of fees, the EPO Economic and Scientific Advisory
Board report, Recommendations for improving the patent system,

164
Hoffmann-Eitle, The EU Patents Package Handbook: A Practioner’s
Guide (Munich: Hoffmann-Eitle, 2014), 24 and 56.
165
Article 5 Translation Regulation.
166
EU Commission Staff Working Paper (Impact Assessment) SEC(2011)
482/2 (2011), 14.
167
Hoffmann-Eitle, The EU Patents Package Handbook: A Practioner’s
Guide (Munich: Hoffmann-Eitle, 2014), 26.

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Analysing the reforms: the UPC and the UP 117

holds considerable interest.168 The EPO report states that with

respect to patent fees the existence of ‘harmonised fee policies at
European level could help to avoid low-quality applications, reduce
complexity and discourage certain patent filing practices’, while it
also warns that any reforms to the current system ‘should have a
clear rationale and beware of unintended consequences’.169
There is little doubt that the pricing of the renewal fee and
associated fees will be crucial for the UP.170 At present, the vast
majority of EPs are validated in the UK, Germany and France,
followed by Italy and Spain. Only 20–30% of EPs are validated in
the Netherlands, Belgium and Sweden, and validations are even
rarer in other countries.171 Given the fact that Spain, Poland – and,
initially, Croatia – will not participate in the new system, further
validations must be sought in these countries (though, as noted
earlier on in this chapter, if the language of patent prosecution at
the EPO is English, it is acceptable for the additional required
translation to be in e.g. Spanish or Polish.
Clearly, inventors and other prospective patentees will need to
consider whether they need the wider protection offered by the UP.
If the costs of the renewal fees – currently expected to be levelled at
the equivalent of the ‘top four’ EPC MS fees – outweigh the
benefits of obtaining wider protection, then the traditional EP with
a limited number of validations may be a better option (see also the
London Agreement).172

168
EPO Economic and Scientific Advisory Board, Recommendations for
Improving the Patent System (2012), 1, available at http://documents.epo.
org/projects/babylon/eponot.nsf/0/835DA6DA218CB760C1257B2C004E809E/
$FILE/ESAB_statement_en.pdf.
169
EPO Economic and Scientific Advisory Board, Recommendations for
Improving the Patent System (2012), 1, available at http://documents.epo.
org/projects/babylon/eponot.nsf/0/835DA6DA218CB760C1257B2C004E809E/
$FILE/ESAB_statement_en.pdf.
170
Article 12(1) UP Regulation.
171
Hoffmann-Eitle, The EU Patents Package Handbook: A Practioner’s
Guide (Munich: Hoffmann-Eitle, 2014), 26.
172
EPO, ‘Business-friendly fee pattern adopted for the unitary patent’
(2015), available at www.epo.org/news-issues/news/2015/20150624.html.

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118 European patent litigation in the shadow of the UPC

Property Considerations: Governing Law for Unitary Patents

and Patentees from States that are not Part of the UPC Agreement

When considered from the point of view of property rights – which

are highly relevant to assignments, licensing, securitization, etc. – a
UP will be under the jurisdiction not of the UPC and its substantive
law, but instead under the national laws of the Signatory States.173
For patentees holding UPs who are based, in some form or other,
within a UPC MS, there is a system of ‘conflict of laws’ – rules
which set the applicable national law, and in most cases this will be
where the applicant has his/her/its main place of business or
residence at the patent application filing date.174 However, it is clear
that for a large amount of UPs – any patent where the applicant/
patentee is resident outside the UPC SS, such as the USA, China,
Japan, South Korea – these are likely to be considered as objects of
property under German law, because these patents will be viewed
as legally granted within the territory of Germany at the EPO.175
However, there is one type of licence that will certainly be
considered by the UPC: the ‘licence of right’ facilitated by the EPO
and usually agreed on FRAND terms.176 Particularly important in
this regard is the concept of ‘appropriate compensation’ – an EU
law concept that may lead the UPC to refer questions to the
CJEU.177

National patents and utility models

National patents will largely be unaffected by the coming into force
of the new UP system.178 However, most EPC MS have enacted

173
Recital 6 and Articles 3(2) and 7(1) UP Regulation.
174
Hoffmann-Eitle, The EU Patents Package Handbook: A Practioner’s
Guide (Munich: Hoffmann-Eitle, 2014), 24.
175
Hoffmann-Eitle, The EU Patents Package Handbook: A Practioner’s
Guide (Munich: Hoffmann-Eitle, 2014), 224. See also Hogan Lovells, ‘Prop-
erty in unitary patents’ (2015), available at www.theunitarypatent.com/
property-in-unitary-patents-.
176
Article 32(1)(h) UPC Agreement and Article 8 UP Regulation.
177
Bird & Bird, ‘Property and contractual aspects of unitary patents and of
patents in the UPC system’ (2014), available at www.twobirds.com/en/news/
articles / 2014 / netherlands /property-and-contractual-aspects-of-unitary-patents-
and-of-patents-in-the-upc-system.
178
Recital 26 UP Regulation.

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Analysing the reforms: the UPC and the UP 119

prohibitions against ‘double protection’ of patents at the EPC and

national levels.179 This means that once the UP is available, it won’t
always be possible to enforce a national patent once an UP based
on the same invention has been applied for/granted. In Germany,
where utility models are available, the UP will not change anything
– a national Germany utility model capable of immediate enforce-
ment, and which uses the priority date of a national or EPO
application, may still be granted and litigated before the national
courts in accordance with current processes and procedures. In fact,
there will be the possibility to enforce the utility model at the
national level in Germany and, subsequently, the EP or UP before
the UPC, covering all UPC Signatory States.180

SUMMARY OF THE KEY ASPECTS OF THE UPC

AND THE UP

+ The UPC will have the exclusive jurisdiction to hear sub-

stantive patent matters – primarily infringement and validity
issues – concerning UPs; and, during the transition period (of
at least seven years), the UPC will share jurisdiction with
national courts over all EPs except those that are opted out of
its jurisdiction during the transition period. Following the end
of the transition period, the UPC will have exclusive juris-
diction to hear substantive patent matters with regard to all
UPs and EPs (except those EPs that have already been opted
out).
+ Key remedies available at the UPC will be the pan-25 EU MS
injunction in the case of patent infringement and the pan-25
EU MS revocation in the case of patent invalidity. Both of
these are novel within the EU, and are likely to prove to be
powerful weapons in the field of patent litigation.
+ UPC central divisions will be based in Paris, London and
Munich. Local divisions in Germany will be based in the

179
Article 139(3) EPC.
180
A. Tombling and A. Fleuchaus, ‘Creative filing strategies for the
unitary patent’ (2014), available at www.fleuchaus.de/wp-content/uploads/
2015/06/MIP-Patentstrategies-UPC.pdf.

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120 European patent litigation in the shadow of the UPC

traditionally strong patent jurisdictions of Düsseldorf, Man-

nheim and Munich as well as Hamburg. The local divisions in
the UK, France and the Netherlands will be located in
London, Paris and The Hague, respectively. Furthermore,
Sweden, Estonia, Latvia and Lithuania are planning to form a
regional division, using English as the common language of
proceedings, while other local divisions will be formed,
including in Ireland.
+ Due to bifurcation, local/regional divisions will hear first-
instance infringement cases; meanwhile, the central divisions
will hear patent revocation actions. However, central divisions
may also hear patent infringement actions (and their respect-
ive counterclaims for revocation) where these are: (i) referred
by local/regional divisions; or (ii) heard at the central division
because there is no local/regional division in the territory of
infringement. Forum shopping will thus likely be available to
litigants at the UPC.
+ Regarding second-instance decisions, the Court of Appeal of
the UPC (situated in Luxembourg) will render final decisions
on patent infringement actions and revocation actions, respec-
tively.
+ The CJEU will deal only with referrals from the UPC on the
interpretation of EU law.
+ The application process for a UP will be the same as for an
EP – the option for unitary protection comes post-grant.
+ Initially, a UP will offer unitary protection in all SS of the
UPC (i) that have joined the EU Enhanced Cooperation
procedure at the time of application for UP registration; and
(ii) where the UPC Agreement is in force on the date of
registration.181 When full ratification of the UPC has
occurred, a newly granted UP will cover 25 EU MS (poten-
tially rising to 26 if and when Poland signs up to the UPC
Agreement, and 28 if both Spain and Croatia join up in the
future). So, full EU territorial scope for the UP is a possibility
in the future – however, due to EU law the UP cannot be

181
Articles 2(a) and 18(2) UP Regulation.

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Analysing the reforms: the UPC and the UP 121

extended to cover non-EU MS that are parties to the EPC

such as Switzerland, Iceland and Turkey.
+ The UP will fall under the exclusive jurisdiction of the UPC,
but most UP property considerations remain within the remit
of national courts, with German law being of significance for
non-EU-based patentees.
+ The UP will be much cheaper to obtain than the EP valida-
tions required to cover the equivalent 25 EU MS due to the
UP translation provisions. As noted in later chapters, however,
the overall cost savings must be considered in light of the UP
renewal fees, as well as from the patentee point of view – do
patentees actually need/desire wider protection?

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4. Exploring perspectives of the

Unified Patent Court and the
Unitary Patent within the
business and legal communities
OVERVIEW OF THE STUDY
During early January 2014, I was commissioned by the UK IPO to
undertake an empirical, qualitative study of the UPC from the
perspectives of those in the legal and business communities who
will use the new system. The principal objective of the study was to
identify and analyse what the key aspects of the UPC and the UP
are for those who will use the new system. The aim was not to limit
the study to UK participants but to include participants from within
and outside the EU.

EMPIRICAL RESEARCH METHODOLOGY

I worked with the IPO to ensure that the overall research method-
ology – and particularly the list of interview questions and the
representative sample of interviewees – was appropriate and tai-
lored to meet the primary aim of the project, i.e. establishing what
the most significant issues are for potential users of the new system.
In this respect, I first examined the available literature on (i) the
current state of patent litigation in Europe and (ii) the UPC/UPC
reforms in order to discover what questions needed to be asked
about the key patent issues in Europe. In this regard, the research
presented in Chapters 2 and 3 of this book corresponds to this
aspect of the study: in Chapter 2 I examined the current state of
European patent litigation, and in Chapter 3 I explored the nature
and characteristics of the UPC and the UP.

122
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The UPC and the UP within the business and legal communities 123

Having outlined these aspects of the European patent system, I

created (i) an initial representative sample to cover the projected
25–30 interviews and (ii) a list of provisional interview questions
which drew on the insights gathered from the literature review. The
representative sample and provisional interview questions were
created with the intention of running four initial pilot interviews to
gauge the responses of interviewees to the questions. During and
immediately after the pilot, the questions were reviewed and
re-designed, incorporating suggestions made by the pilot inter-
viewees, before the remaining interviews took place. Once the core
set of questions had been finalized (following the four pilot
interviews), the remaining interview candidates were invited to take
part, and the remaining interviews took place from February to
March 2014.

Developing the Interview Questions

Regarding the subjects of discussion in the interviews, the research

undertaken in Chapters 2 and 3 of this book highlighted a number
of significant insights that informed the writing of the specific
interview questions shown in the Annex. Of particular importance
in this respect were the following points:

+ The vast majority of patent litigation in Europe occurs in

Germany, a jurisdiction which is known for speedy, bifurcated
infringement proceedings – something which often results in a
high rate of patent infringement and a high rate of settlement;
the UK meanwhile is a jurisdiction with a high proportion of
pharma and chemical patent litigation, and with a high rate of
patent revocation; proceedings are also speedy in the Nether-
lands and take the longest in France.
+ The private litigation costs of patent litigation are very high in
the UK, which features wide disclosure, use of expert and
experimental evidence, and long oral hearings; private costs
are much lower in Germany, France and the Netherlands, all
of which use a paper-based system, with very short oral
hearings and more limited required disclosure.

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124 European patent litigation in the shadow of the UPC

+ Value-based court fees have been used for a long time in

Germany and have recently been introduced in the UK.
+ While only relevant for a minority of litigated patents, parallel
litigation does take place across EU jurisdictions and often
results in different outcomes. This creates a problem of legal
uncertainty, as well as competition issues.
+ The UPC will have the exclusive jurisdiction to hear substan-
tive patent matters – primarily concerning infringement and
validity – concerning UPs; and, during the transition period
(of at least seven years), the UPC will share jurisdiction with
national courts over all EPs except those EPs that are opted
out of its jurisdiction during the transition period. Following
the end of the transition period, the UPC will have exclusive
jurisdiction to hear substantive patent matters with regard to
both UPs and EPs (except those EPs that have already been
opted out). Key remedies available at the UPC will be the
pan-25 EU MS injunction in the case of patent infringement
and the pan-25 EU MS revocation in the case of patent
invalidity.
+ UPC central divisions will be based in Paris, London and
Munich. Local divisions in Germany will be based in the
traditionally strong patent jurisdictions of Düsseldorf, Man-
nheim, Munich as well as Hamburg. The local divisions in the
UK, France and the Netherlands will be located in London,
Paris and The Hague, respectively. Furthermore, Sweden,
Estonia, Latvia and Lithuania are planning to form a regional
division, using English as the common language of proceed-
ings, while other local divisions will be formed, including in
Ireland.
+ Due to bifurcation, local/regional divisions will hear first-
instance infringement cases; meanwhile, the central divisions
will hear patent revocation actions. However, central divisions
may also hear patent infringement actions (and their respect-
ive counterclaims for revocation) where these are: (i) referred
by local/regional divisions; or (ii) heard at the central division
because there is no local/regional division in the territory of
infringement. Forum shopping will thus likely be available to
litigants at the UPC.

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The UPC and the UP within the business and legal communities 125

+ Regarding second-instance decisions, the Court of Appeal of

the UPC (situated in Luxembourg) will render final decisions
on patent infringement actions and revocation actions, respec-
tively.
+ The CJEU will deal only with referrals from the UPC on the
interpretation of EU law.
+ The application process for a UP will be the same as for an
EP – the option for unitary protection comes post-grant.
+ Initially, a UP will offer unitary protection in all SS of the
UPC (i) that have joined the EU Enhanced Cooperation
procedure at the time of application for UP registration; and
(ii) where the UPC Agreement is in force on the date of
registration.1 When full ratification of the UPC has occurred,
a newly granted UP will cover 25 EU MS (potentially rising
to 26 if and when Poland signs up to the UPC Agreement, and
28 if both Spain and Croatia join up in the future). So, full EU
territorial scope for the UP is a possibility in the future –
however, due to EU law the UP cannot be extended to cover
non-EU MS that are parties to the EPC such as Switzerland,
Iceland and Turkey.
+ The UP will fall under the exclusive jurisdiction of the UPC,
but most UP property considerations remain within the remit
of national courts, with German law being of significance for
non-EU-based patentees.
+ The UP will be much cheaper to obtain than the EP valida-
tions required to cover the equivalent 25 EU MS, due to the
UP translation provisions. However, the overall cost savings
must be considered in light of the UP renewal fees, as well as
from the patentee point of view – do patentees actually
need/desire wider protection?

With respect to qualitative IP research more generally, Greenhalgh

et al. collected survey data on a small sample of patenting and
non-patenting companies (active between 2002 and 2009) to ana-
lyse the IP litigation activity of micro firms and SMEs, with a

1
Articles 2(a) and 18(2) UP Regulation.

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126 European patent litigation in the shadow of the UPC

particular focus on IP disputes that did not make it to court.2

Greenhalgh et al. found that approximately 40% of patent-holding
firms were involved in some kind of IP dispute during the five years
prior to the survey. The study highlights the challenges that SMEs
face in conducting IP litigation – noting, in particular, the fact that
IP litigation is typically viewed by SMEs as being too costly and
time-consuming for them to realistically engage in, even in situ-
ations where they think infringement of their rights has occurred. In
addition to the points highlighted above, this insight informed the
question design for the SME interviews undertaken during the
development of this book project.
Overall, therefore, regarding the approach taken in drawing up
the questionnaire for the interviews, the process was informed by
insights drawn from the above research and literature review, and
several recent academic publications on the subject of the UPC/UP
reforms.3
As shown in part I of the Annex, the provisional list of questions
was drawn up to include general questions covering interviewee
attitudes towards the UPC/UP (including hopes and fears), and
specific questions on the opt-out option, the various UPC/UP fees,
the UPC locations and several business sector-specific issues.

Creating the Representative Sample

I drew up a purposive qualitative case study sample featuring direct

and indirect potential users of the UP/UPC.4 The sample included a
total of 28 interviewees from the following categories:

2
C. Greenhalgh, J. Philips, R. Pitkethly, M. Rogers and J. Tomalin,
Intellectual Property Enforcement in Smaller UK Firms: A Report for the
Strategy Advisory Board for Intellectual Property Policy (SABIP, 2010), 1,
69–70.
3
See e.g. A. Kaisi, ‘Finally a single European right for the EU? An
analysis of the substantive provisions of the European patent with unitary
effect’, European Intellectual Property Review 36 (2014), 170; J. Pila, ‘The
European patent: an old and vexing problem’, International & Comparative
Law Quarterly 62 (2013), 917; and A. West, S. Kusumakar and T. Powell,
‘Unitary patents and the Unified Patent Court’, Computer and Telecommunica-
tions Law Review 19 (2013), 105.
4
For discussion of the way ‘samples’ and ‘fields’ are constructed in
relation to empirical research, see S. Dalsgaard, ‘The field as a temporal entity

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The UPC and the UP within the business and legal communities 127

(i) representatives of large businesses based in the UK (in-house

counsel and IP experts);
(ii) representatives of large businesses based in the EU (in-house
counsel and IP experts);
(iii) representatives of SMEs in the UK;
(iv) patent attorneys in the UK and elsewhere in the major EU
jurisdictions (e.g. Germany);5
(v) solicitors/attorneys/lawyers in the UK and elsewhere in the
major EU jurisdictions (e.g. Germany);6
(vi) representative bodies.

Thus, the interviewee sample included representatives – such as

in-house counsel/patent attorneys/IP experts – of large businesses
based in the EU, with a particular emphasis on UK-based com-
panies. This sample included a broad spectrum of large companies
in the various sectors that reflect the three UPC central divisions in
London (Pharma/Chemicals), Munich (Engineering) and Paris (eve-
rything else, including Information and Communications Tech-
nology (ICT) and Electronics). For simplification purposes, and to
enhance anonymity, the analysis provided over the course of this
chapter uses the category of the ‘ICT sector’ (ICT) to include both
ICT companies and companies that manufacture consumer electron-
ics, while the ‘Engineering sector’ (ENG) includes a broad range of
companies involved in large-scale manufacturing, such as auto-
motive and defence companies. Where the term ‘Pharma/Chemicals
sector’ is used, it encompasses pharmaceutical and chemicals
companies (though, at other times, where necessary, these sectors
are analysed separately). I took care to ensure that a balanced
number of representatives from all three of these broad sectors were
invited to participate. Finally, it is important to note that for the

and the challenges of the contemporary’, Social Anthropology 20 (2013), 213.

Regarding analysis of what the appropriate length and breadth of empirical
research projects is, see G. Marcus, ‘How short can fieldwork be?’, Social
Anthropology 15 (2007), 353.
5
It was initially intended that the project would include French lawyers,
but unfortunately this proved impossible within the time frame of the project.
Despite the efforts of the author and the IPO (six email invitations were
issued), no French invitees from the legal community accepted the invitation to
participate.
6
As note 5.

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128 European patent litigation in the shadow of the UPC

purposes of clarity, and to enhance anonymity, the various in-house

counsel/patent attorneys/IP experts working at each company are
referred to in the analysis below as ‘in-house counsel’.
Regarding SMEs, there are significant challenges to obtaining a
representative sample of SME interviewees, given the size and
diversity of the SME sector; moreover, its patentee members tend to
be less visible than their larger peers. Indeed, early responses from
interviewees during the pilot stage of the data-gathering process
underlined this challenge: unlike larger businesses, SMEs often do
not have an in-house dedicated team of IP experts/counsel, and for
this reason SMEs tend to follow closely the advice of their patent
attorneys in legal matters. In light of this, the SME perspective is
represented in this report via two methods – first, through examin-
ation of the interview data gathered from solicitors and patent
attorneys with direct experience of advising SMEs; and second, via
analysis of the interview data gathered from interviews undertaken
with in-house IP experts operating at one Pharma SME and one
ICT SME.
Ultimately, with regard to the business community a total of 15
interviews took place featuring a total of 17 respondents (two
interviews were dual interviews). Of the 15, seven interviews
(featuring nine participants) took place with in-house representa-
tives of the ICT sector (including one ICT SME); five interviews
took place with in-house representatives of the Pharma/Chemicals
sector (including one Pharma SME);7 and three interviews took
place with experienced in-house counsel at engineering firms.
These in-house interviewees include a number of qualified lawyers
and patent attorneys, several of whom have experience of repre-
sentative organizations.
The reason for the slight over-emphasis of the ICT sector in
terms of the number of interviewees is that, on average, invitees
from this sector responded more positively and much more quickly

7
It is worth noting that one of these ‘Pharma’ multi-national companies
was a large ‘diversified’ company which also had business in areas other than
Pharma, including in the Engineering sector. However, the greater emphasis
during the interview was on the Pharma side of the business, than on other
areas, which is why it is put into this category.

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The UPC and the UP within the business and legal communities 129

to the invitations than invitees in other sectors.8 This may well

indicate that patent experts in the ICT sector are particularly
engaged with the UPC/UP discussions. Moreover, during the initial
pilot and early interviews, several interviewees suggested other
potential participants who might be interested in the study – three
of the eventual ICT interviewees were initially contacted via this
‘snowball’ method, as was one Pharma interviewee.
With respect to the legal community, a total of 11 interviews took
place, featuring 11 individual participants – three of whom have
experience of working in representative organizations. Of the 11,
six interviews took place with UK solicitors who have experience
of patent litigation (including two who have experience of SME
patent litigation). Meanwhile, two interviews took place with UK
patent attorneys – one who has experience working with larger
businesses in private practice and one whose main experience
comes from advising SMEs. Finally, one interview took place with
an experienced German lawyer and two interviews took place with
experienced German patent attorneys.
Ultimately, a total of 26 interviews (featuring a total of 28
interviewees) took place – 15 from the business community and 11
from the legal community. The interviewees agreed to participate
voluntarily under the condition of anonymity. They gave up their
time generously, for which I am most grateful. All data is held and
used anonymously in accordance with the Data Protection Act
1998.

The Conduct of the Interviews: January–March 2014

As noted earlier in this chapter, during early-to-mid January 2014 I

worked with the IPO to identify the specific questions that the
project ought to ask.9 Following the creation of the list of provi-
sional questions, four pilot interviews took place during late Janu-
ary 2014. The first two involved a UK patent attorney and an ICT

8
Overall, an equal number – approximately nine to ten – invitations were
sent out to representatives from each sector – ‘Pharma/Chemicals’, ‘Engin-
eering’ and ‘ICT’.
9
This list of provisional interview questions is shown in part I of the
Annex.

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130 European patent litigation in the shadow of the UPC

in-house counsel. The main feedback comments from these inter-

views were as follows:

+ Both interviewees noted that the questions covered most of

the key issues, but they argued that there were too many
questions in the list; they felt that although the right questions
were asked, the interview did not flow as easily as it could
have. For this reason, they felt the list needed to be simplified
and framed around six to seven core questions.
+ One of the interviewees made the suggestion that two add-
itional questions be added – one on the possible interplay
between UPC revocation actions and EPO oppositions in light
of the EPO backlog; and one on the issue of whether
patentees would consider a return to the national patenting
systems once the UPC transitional period ends and they can
no longer opt out of the UPC system.

In light of this feedback, the author designed two new questions

covering these issues and added them to the provisional list of
questions – as shown in part I of the Annex. Following this, the
final two pilot interviews were carried out – both of these inter-
views featured in-house ICT counsel. These final pilot interviews
followed the initial provisional list of questions (with the addition
of the two new questions) with the intention of gauging responses/
interview flow in order to restructure the list of questions post-pilot.
Then, following the final two pilot interviews, I re-oriented and to
some extent simplified the interview questions in order to create the
final list of questions – shown in part II of the Annex. The
remaining 22 out of the overall total of 26 interviews took place
using this final list of questions.10 In total, 23 out of 26 interviews
were carried out over the phone, two were carried out face-to-face
and one interview was carried out in a truncated form via email in
line with the participant’s wishes after he had been forced

10
However, it is notable that the first eight interviews did not feature
Question 7 – which asked interviewees about their sources of information on
the UPC – as this question was only added following a suggestion by the IPO
after the first eight interviews took place.

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The UPC and the UP within the business and legal communities 131

to withdraw from a phone interview at the last minute due to work

constraints.11

Empirical Data Analysis

By asking a set of seven to eight core questions to each interviewee

(as detailed in the Annex), I sought to discover what stakeholders
consider to be the most important issues with respect to the UPC
and the UP. The key issues explored below include the costs of
using the UPC and the UP, the opt-out decision, various business
sector-specific concerns, as well as the changes the new system will
bring to the legal community.

Assessing the costs of the UPC and the UP

All interviewees, whether from the business field or from the legal
community, stated that they were concerned about some or all of
the costs of using the new system, namely the (then proposed) UPC
opt-out fee, the fees for using the UPC, and the UP renewal fees.
These issues were of particular concern for businesses at the time of
interview since the levels of these fees had not yet been finalized,
which meant that businesses were unable to properly weigh up the
costs/benefits of using the new system.12 The views the inter-
viewees expressed in the study regarding the fees ended up feeding
back into the preparations for the organization of the court,
something I discuss further in the following chapter.

The opt-out fee The (then proposed) UPC opt-out fee was noted
as a major concern for patentees: the interviewees stated universally
that a relatively high opt-out fee would dissuade businesses from
opting out their entire portfolio from the courts system. For this
reason, several interviewees argued that this fee should be set at a
relatively low, administrative level. Nonetheless, interviewees from
the ICT sector noted that these small administrative fees would

11
Not all questions were asked/answered during this truncated interview,
due to the participant’s time constraints. Where a question was not asked/
answered, this is noted in the Annex.
12
J. Nurton, ‘Patent practitioners call for UPC cost clarity’, Managing
Intellectual Property (2014), available at http://.managingip.com/Article/
3320776/Patent-practitioners-call-for-UPC-cost-clarity.html.

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132 European patent litigation in the shadow of the UPC

soon add up for companies seeking to opt out large portfolios. In

this respect, one interviewee solicitor argued that ‘bulk opt-outs
should get a discount on the opt-out fees’.

Court fee levels at the UPC Generally, the UPC fees issue was
stated by stakeholders to be a less important one than the issue of
the UP renewal fees. Indeed, as detailed in the Annex, around half
of the interviewees stated that they do not see the UPC fees issue as
a major concern. The reason for this comparative lack of concern
about court fees, in comparison with the UP renewal fees discussed
further on, is that while renewal fees have to be paid for every
patent, court fees only come into play for litigated patents – and the
vast majority of patents are never litigated. Moreover, in the UK (at
time of interview) the PHC fees were dwarfed by the private legal
costs of undertaking litigation at the court, which typically amount
to more than £1 million for each side.13 Interestingly, as noted in
Chapter 2, the UK has now switched to a system of value-based
fees, something I reflect on in the analysis below and in the final
concluding chapter of this book.
That being said, even though the UPC fees issue was generally
seen by interviewees as less important than the UP renewal fees
issue, several interviewees made important observations concerning
the UPC fees. In particular, it was noted that in Germany the costs
of the court fees in patent cases can often rival the private legal
costs – court fee figures of between €100,000 and €200,000 per
case were regularly cited by interviewees based on their prior
experience of the German system. Given the fact that there are great
disparities in court fees between different European jurisdictions –
and in particular between the traditional fixed UK fees (now
changed) and the value-based fees found in Germany – there was
understandably a great deal of scepticism amongst some stake-
holders about basing the UPC fees on a combination of the current
court fee levels in, for example, 3–4 EU MS.
For this reason, just over a quarter of all interviewees argued that
the UPC fees should be set at a level significantly lower than the
current German fees – and not at a combined DE + UK + NL level.

13
L. McDonagh and C. Helmers, ‘Patent litigation in England and Wales
and the issue-based approach to costs’, Civil Justice Quarterly 32 (2013), 369.

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The UPC and the UP within the business and legal communities 133

In terms of specifics, one solicitor interviewee argued that the initial

filing fee ‘should be less than £10,000’ and that the overall court
fees ought to amount to ‘much less than the €200,000 level that
commonly results in Germany’.
Other stakeholders were more sanguine on the fees issue. A small
minority of interviewees stated that they would be willing to accept
UPC fees approximating the fees of litigating in 1–2, or even 3–4,
jurisdictions. For instance, one Germany-based lawyer stated that a
fee level at the 1–2 MS level would be ideal because at present
most patentee companies do not litigate in more than 1–2 juris-
dictions. Furthermore, one in-house ICT counsel even stated that
high upfront filing fees are ‘something they favour’ because such
fees ‘act as a deterrent to the filing of frivolous lawsuits’.

Value-based fees The proposed fee system for the UPC will
feature a mixture of fixed and value-based fees, with the value-
based fees coming into play once a certain value threshold is met.
Some potential users of the UPC voiced scepticism about the use of
a value-based fees system. For example, one experienced solicitor
argued that using a German-style value-based fee system within the
UPC would not provide litigants with a reliable costs gauge ‘given
that in Germany damages can be claimed which go beyond this
“value”’. Instead, he argued that it would be better to establish an
instalment-based, incremental fee system, based on how much the
parties use the court, for example the number of hearing days or
applications.
By contrast, a German lawyer I spoke to argued that the
value-based system ‘works very well’ in the vast majority of cases
in Germany where ‘it is used in order to cap costs’. He noted that in
the majority of cases ‘parties tend to come to agreement’ with
respect to what level the value should be set at. Similarly, a
Germany-based patent attorney (PA) remarked: ‘The value-based
fees system in Germany works well because it is transparent and it
caps the court fees and lawyers’ fees – especially for the defendant
who knows his liability for these fees.’
This comment highlights an important feature of the value-based
system in Germany – it caps not only the court fees but also the
recoverable private legal costs. This second element – the limit on
recovery of private legal costs – provides an incentive to each side
to keep their own costs low. At time of interview it was not yet

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134 European patent litigation in the shadow of the UPC

known whether the UPC system would include a cap on recover-

able costs, but this possibility was of interest to participants, and the
final UPC fees schedule, discussed further in the next chapter, does
indeed include a ceiling on recoverable costs.
One in-house ICT counsel consulted with his colleagues based in
Germany about their experiences of the value-based fee system
there, and he then related their comments to me as part of the
interview process. With regard to positive comments, he stated that
the value-based system ‘acts as a disincentive’ to the kind of ‘patent
trolling’ behaviour commonly found in the USA, because ‘taking a
speculative case against a big player can mean high costs re-
imbursement’. He noted that another positive of the value-based
system is that at the end of the case there is no argument between
parties about the amount of costs. He remarked: ‘By contrast, it is
not uncommon for parties in the UK to spend as much money
arguing about the costs award as they spend on the case itself.’
With respect to negative comments about the value-based system,
the same interviewee argued that the German system does not
provide SMEs with adequate incentives to make counterclaims for
invalidity in the context of infringement actions, something which
in his opinion ultimately favours larger companies. One final thing
he commented on relates to case-counting, which works very
differently in the UK and Germany.14 He remarked:

If 3 parties attack the same patent, these count as three separate cases,
even if they are heard jointly … So the loser may have to pay three
times. In the context of the UPC this is an important consideration in
either multi-party or multi-patent cases, and the Rules of Procedure
need to get this right to ensure overall fees remain within reasonable
levels.

Will the UPC help to lower the costs of patent litigation in Europe?
With respect to the idea that the UPC will reduce the overall costs
of patent litigation in Europe, the interviewees expressed scepticism
that this will in fact be the result. Indeed, one in-house Pharma
counsel stated confidently that the costs of litigating at the UPC

14
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1.

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The UPC and the UP within the business and legal communities 135

will not, in fact, turn out to be lower than the costs of litigating
within the current national systems. He argued that the coming into
force of the new system ‘will effectively move cases from Ger-
many, where most patent litigation happens, to the UPC’;15 more-
over, since, in his view, litigation at the UPC is likely to prove to be
more expensive than the current costs of German patent litigation,
the overall costs of patent litigation in Europe are likely to go up. In
a similar vein, one in-house ICT counsel remarked that ‘realistically
the costs of the new system will inevitably be higher than they are
now’.
Nonetheless, a Germany-based lawyer put forward a dissenting
view, arguing that the UPC will, in fact, reduce the costs of
litigation in Europe. Crucially, however, she argued that this will
only be the case if the UPC litigation costs do not go beyond the
current costs of litigating in 1–2 MS, noting that at present most
litigated patents are not litigated beyond two European juris-
dictions. Similarly, a German-based PA stated that the UPC fees
‘will be lower than the current German fees’ – though, conversely,
he remarked that the private legal costs of litigating at the UPC will
probably ‘be closer to the UK level’ than the lower level currently
found in Germany.
In light of this, and the comments made above concerning the
value-based system, it is reasonable to summarize the UPC costs
issue as follows: the expectation amongst stakeholders at time of
interview was that the UPC fees would be higher than the trad-
itional non-value-based UK fees (which ended in 2015), but they
expressed hope that the fees would not be as high as the current
German fees. With respect to private legal costs, some interviewees
expressed the fear that the private legal costs of taking a UPC case
will end up being closer to the high UK level than the compara-
tively lower German level, given the fact that the UPC has a much
wider jurisdictional remit than the individual national courts, some-
thing that may require a lot of legal resources to be expounded by

15
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 5, noting that most patent litigation in Europe takes place in
Germany at present; moreover, only a relatively small proportion of EPs are
litigated in more than one jurisdiction. It is likely, therefore, that the UPC will
take many cases that would otherwise be heard in Germany.

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136 European patent litigation in the shadow of the UPC

each side. On the other hand, the absence of lengthy, UK-style oral
hearings is likely to keep costs down. Given that it has now been
confirmed that the UPC will, as some interviewees hoped, feature a
ceiling on recoverable private legal costs (depending on case value),
this may give both sides an incentive to keep their own costs
down.16
The overall worst case UPC costs scenario for stakeholders
would be one featuring court fees at the German level, or higher,
and private legal costs close to the UK level, or higher. However,
given the absence of lengthy oral hearings at the UPC it seems
unlikely – though not impossible – that the private legal costs will
reach UK levels. Moreover, as I discuss in the next chapter, the
benefits of one-stop enforcement (such as the availability of 25 EU
MS injunctions) also need to be taken into account when the costs
are considered, as these benefits may make litigation at the UPC
worthwhile, even if the litigation costs end up being higher than
stakeholders hope.

UP renewal fee levels The crucial importance of the renewal fees

issue was emphasized by all interviewees. For instance, one
Germany-based PA I spoke to remarked that the key issue for the
future success of the UP ‘is this renewal fees issue’. In fact, he
argued that ‘this is currently being underestimated in terms of its
importance’ by policy-makers.
It is clear from the interview responses, as further detailed in the
Annex, that at time of interview the majority of stakeholders felt
that in order to encourage utilization of the UP the level of the
renewal fees ought to be set around the 3 MS level (UK + DE +
FR). They argued any fee level that goes significantly beyond this
runs the risk of creating a serious disincentive to utilization of the
UP. Indeed, one interviewee argued that the ‘ideal fee’ would be at
the 2 MS level – and specifically a UK + DE fee – stating that
‘only that would be a genuine incentive’. He argued that a 3 MS fee
would merely be ‘neutral’ since this represents the costs of patent-
ing for most companies in the present system. On the other hand,
one in-house ICT counsel stated that her company ‘would like to

16
Details of the final fees schedule are available here – www.unified-
patent-court.org /sites /default/files/agreed_and_final_r370_subject_to_legal_
scrubbing_to_secretariat.pdf.

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The UPC and the UP within the business and legal communities 137

see a higher renewal fee because higher fees discourage spurious

patenting’. Notably, this was a uniquely held view amongst the
interviewees.
With respect to specific figures for renewal fees, one experienced
Germany-based PA gave some relevant estimates. As an example,
he focused on the sixth year of renewal fees for the UK + DE + FR,
which he said amounts to a total of approximately €350, further
noting that with the addition of NL + SWE this total would increase
to €520. Regarding the proposed UP renewal fee level, he
remarked: ‘I’ve heard some speculation that the equivalent UP
renewal fee will be close to €600.’
In his opinion, this €600 fee would be ‘far too high’ as it goes
beyond even the renewal fees of 4–5 MS. For him, the ideal fee
would lie between 3 and 4 MS, i.e. not more than €400.
Similarly, one in-house Chemicals counsel stated that if the
renewal fee is set at a level above 3–4 MS this will result in there
being ‘very few UP cases in the system’ – something that will not
bode well for establishing a strong body of UPC jurisprudence. For
him, the crucial issue that policy-makers ‘must take into account’ is
that ‘the increased protection is not really worth paying extra for’.
Similarly, a German-based PA warned that the UP will probably be
seriously under-utilized unless the fee levels are set ‘well below the
6 MS fees that have been discussed’.
Indeed, with the exception of the Pharma sector – where the
in-house interviewees acknowledged that patenting in all, or a great
many, EU MS is relatively common – most interviewees from the
ICT and ENG sectors stated that their companies tend to patent in
no more than 3–4 MS. In this respect, the representatives from ICT
and ENG companies said that their companies typically validate in
a selection of the UK, Germany, France, the Netherlands, Sweden,
Italy and Spain – with the UK and Germany being relative
constants. Nonetheless, exceptions to this do exist: one in-house
ENG counsel said that her company tends to patent in only 1–2 MS
(UK + DE); meanwhile, another interviewee – also an in-house
ENG counsel – stated that her company typically seeks to patent in
7–15 MS, with the larger number of validations coming into play in
the case of a highly valuable patent. In addition, the in-house
Chemicals counsel I interviewed noted that his company commonly
tends to patent in 8 MS.

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138 European patent litigation in the shadow of the UPC

Therefore, looking at all of the various sectors it is clear that only

the Pharma sector would find a renewal fee set far above the 3 MS
level – such as at the 6–8 MS level – to be advantageous, since this
would still be a significant cost saving on validating in all the MS
separately. Nonetheless, despite this apparent benefit to the Pharma
sector, one German-based lawyer I spoke to argued that for Pharma
the costs of renewing the patent are not actually the ultimate
‘deal-breaker’ with respect to prospective use of the UP and the
UPC; instead, the interviewee argued that Pharma companies are
actually willing to pay whatever the necessary fees are in order to
secure EU-wide protection, regardless of the cost, because for
Pharma these fees amount to a small cost in the grand scheme of
things. The interviewee went on to say that the key factor for
Pharma with respect to use of the UP is likely to be the UPC’s
success (or not) in generating a consistent body of case law across
the system – only that would persuade the Pharma sector to adopt
the UP wholesale. The impact of the fact that the UP renewal fee
has, post-interviews, now been set at the 4 MS level is discussed in
the next chapter.

Pruning of the Patent Portfolio

Several interviewees noted that many companies, particularly those

who patent in only 3–4 MS, tend to ‘prune’ their patent validations
selectively towards the end of patent life, i.e. they may choose to
drop the validations in the more expensive jurisdictions and simply
keep up protection in the cheapest 1–2 MS.
Crucially, with the UP this type of selective pruning will not be
possible – a company will either renew the UP entirely or not at all.
Thus, keeping a patent ‘alive’ in the final few years of its life is
likely to be more expensive with a UP than with an EP validated in
1–2 jurisdictions (after a couple of the initial 3–4 jurisdictions have
been dropped). On this point, an experienced PA I spoke to argued
that even if the UP renewal fee is set at the 3 MS level this will not
actually provide much of an incentive to use the UP because of the
loss of the ability to prune selectively.
Nonetheless, as shown in the Annex, while pruning was cited as
an important consideration by the majority of interviewees, a
substantial minority did not cite it as significant. This indicates that

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The UPC and the UP within the business and legal communities 139

the pruning issue, while a legitimate concern, may not in itself be a

‘deal-breaker’ regarding use of the UP.

The UP versus the EP

One further point is of interest – a small number of interviewees

argued that the UP offers little cost benefit over the EP in light of
the ‘London Agreement’, which reduces EP translation costs.17 In
line with this, an experienced Germany-based PA remarked that the
supposed advantages of the UP are currently being exaggerated by
its proponents, noting that the current EP ‘remains quite attractive
because of the London Agreement’. Moreover, a small number of
interviewees further stated that any possible benefits of the UP over
the EP will be tempered by the fact that although the UP offers
wider protection, not all EU MS are taking part in the new system,
which leaves the EU patent system still partially fragmented.

KEY CONCERNS FOR USERS OF THE UPC

The interview participants cited a number of major concerns about
the UPC – namely, the quality and composition of the UPC judicial
panels, the use of bifurcation in the context of the issuance of
injunctions at the UPC, patent troll litigation and forum shopping.

Judicial Composition and Quality

It is crucial that potential users of the court perceive the UPC as

being a venue for high-quality, consistent decision-making. Many
interviewees stated, in fact, that this would actually prove to be the
most important factor in their determination of whether or not to
use the UPC – more important even than the cost factor. Indeed, all
interviewees said that the UPC policy-makers must take the issues
of judicial composition and quality very seriously, and that the
necessary funds and structures ought to be put in place to ensure
proper judicial training.
In this vein, one experienced solicitor I interviewed stated that
the training of judges ‘will prove to be vital’, especially for

17
www.epo.org/law-practice/legal-texts/london-agreement/key-points.html.

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140 European patent litigation in the shadow of the UPC

jurisdictions where there is little or no established history of patent

litigation. On this point, one in-house Chemicals counsel argued on
a positive note that there is sufficient EU-wide expertise – espe-
cially in the major patent litigation states of the UK, Germany and
France – available to train the judges. On this issue, a useful point
was made by one interviewee – a German-based PA – who
suggested that analysis of how exactly experts from more than 30
EPC MS have been integrated into the EPO Technical Boards could
prove to be a useful model for training judges across the UPC
Signatory States.
With respect to how the three-person judicial panels are likely to
work in practice, one solicitor interviewee stated that the single
experienced visiting judge would probably come to be dominated
by the two local judges, stating that ‘this inevitably tends to happen
within judicial panels’. Meanwhile, some interviewees noted that
fears over composition and quality at the local/regional levels could
be allayed by establishing strong central divisions and a solid Court
of Appeal, so that the jurisprudence of the UPC filters down to the
lower divisions, thereby ensuring consistency across the entire UPC
system.

Bifurcation and injunctions

Businesses – and ICT companies in particular – expressed a great
deal of worry about how bifurcation will operate at the UPC.
Interestingly, in the legal community few interviewees expressed
concern over bifurcation – it was described by more than one legal
interviewee as an ‘overblown’ issue.
The interviewees who expressed concern about bifurcation were
particularly worried that there will be an ‘injunction gap’ between
the infringement hearing and the validity hearing, i.e. that a
decision to grant an injunction could be issued by a lower court
before the patent is officially declared valid by the upper court.18
On this issue, several ICT interviewees argued that UPC judges
ought to be provided with clear guidelines governing when bifurca-
tion should occur, so that businesses can be reasonably certain,

18
K. Cremers, F. Gaessler, D. Harhoff and C. Helmers, ‘Invalid but
infringed? An analysis of Germany’s bifurcated patent litigation system’, Max
Planck Institute for Innovation & Competition Research Paper No. 14-14
(2014), 1.

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The UPC and the UP within the business and legal communities 141

prior to the opt-out decision, about how bifurcation will actually

work in practice. Indeed, universally within the ICT sector the
interviewees stated that the (then) current draft guidelines were
insufficient. However, one experienced solicitor remarked that ‘it is
probable that there won’t be guidelines and that courts will just
have discretion regarding when to bifurcate’. Despite this, he
argued that the bifurcation ‘problem’ has been ‘overstated’ because
‘bifurcation is unlikely to happen very often’, and that even where
it does happen ‘section 220(2) is crucial because it allows appeals
on procedural matters’.19
In a similar vein, one in-house Chemicals counsel was more
relaxed about the bifurcation and injunction gap issues, noting that
the UPC will not feature German-style mandatory bifurcation;
instead, it will feature what he described as ‘bifurcation-lite’,
whereby the judges will have discretion concerning whether or not
to bifurcate. He also expressed the view that even where bifurcation
does occur in the new system, it is likely the UPC will be much
quicker than the German courts currently are at deciding bifurcated
validity/infringement decisions. This will (hopefully) prevent the
dreaded ‘invalid, but infringed’ scenario from occurring.
Looking at the issue of injunctions more generally, the interview
data indicate that the UPC’s ability to issue pan-25 EU MS
injunctions ought to be viewed very much as a double-edged sword:
those who tend to act as claimants in litigation want the ability to
seek pan-25 EU MS injunctions against their competitors via the
UPC, while those who act primarily as defendants fear the conse-
quences of those same injunctions.
Interestingly, a relatively large number of interviewees from the
Pharma sector stated that they had either a positive or neutral view
of the availability of pan-25 EU MS injunctions at the UPC. By
contrast, in the ICT sector the opposite view was prevalent; for
instance, one in-house ICT counsel remarked that because her
company tends to act primarily as a defendant in litigation, it is
currently very concerned about the interplay between bifurcation
and the issuing of injunctions at the UPC. Like many other
interviewees, she said that her company is taking a cautious ‘wait
and see’ approach towards the UPC on this issue.

19
UPC Rules of Procedure.

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142 European patent litigation in the shadow of the UPC

Patent Troll Litigation and Forum Shopping

The uncertainty inherent in any new court system is of itself likely

to attract NPEs, or patent trolls, to the UPC. On this point, one
experienced solicitor remarked that ‘patent trolls may like the new
system because they like uncertainty’. With this in mind, many
interviewees argued that the Rules of Procedure for the UPC ought
be clarified and finalized as soon as possible to help businesses plan
for the new system (something that occurred, post-interviews, in
late 2015, as noted in the next chapter).
It is also important to note that fears concerning a possible
growth in patent troll litigation at the UPC are closely related to the
above issues of bifurcation and injunctions, since exploitation of the
‘injunction threat’ is a common tactic in patent troll litigation.20 A
number of interviewees argued that the patent troll issue has
exploded in the USA in recent years largely because it is possible to
obtain a pan-US injunction from a single regional court. In this
vein, one in-house ICT counsel stated that ‘there’s a big problem
with trolls in the USA and the new UPC system must avoid this
problem’. Indeed, the same interviewee stated that if the ICT sector
‘sees trolls getting injunctions across all UPC Signatory States’ then
the sector will quickly lose faith in the UPC. The positive corollary
to this point is that if fears over bifurcation and injunctions can be
allayed – ideally, by the setting up of a high quality judicial system
across the UPC – the risk of patent troll litigation can probably be
minimized.
However, another concern – and one that is closely related to the
patent trolls issue – is the question of whether forum shopping will
occur within the UPC system. On this point, one experienced
solicitor said confidently that ‘there will be competition’ between
the various local/regional courts under the new UPC system.
Nonetheless, he argued that this may not prove to be as problematic
as some fear, noting that to some extent competition already exists
under the current EPC system – for example, there is competition
between the UK courts and the German courts (as well as between
the various German courts). Indeed, one Germany-based PA

20
L. McDonagh and C. Helmers, ‘Patent litigation in England and Wales
and the issue-based approach to costs’, Civil Justice Quarterly 32 (2013), 369.

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The UPC and the UP within the business and legal communities 143

remarked that Germany is a useful comparator since ‘there are three

major patent courts’ in Germany and although ‘forum shopping
does occur’ within the German system, it does not create major
problems. In fact, he argued that the existence of forum shopping at
the UPC will ‘increase competition, which in turn will increase the
quality of the court system, as in Germany’.
For others, however, the possibility that forum shopping may
occur within the local/regional divisions of the new system raised a
lot of concerns. For instance, one in-house ICT counsel remarked
that ‘litigation is about playing games’ and that ‘you pick the most
difficult forum for your opponent’. In this respect, he stated that the
ability to engage in forum shopping ‘is an advantage for patentees,
and a disadvantage for potential infringers’. Continuing in this vein,
one in-house Pharma counsel stated that his big fear is that the
various regional courts will decide ‘to compete with each other for
business’ by becoming very ‘patentee friendly’, i.e. there could be a
‘race to the bottom’ in terms of the quality of judicial decision
making. In that context, a patent troll could identify the most
‘patentee-friendly’ local or regional court, and then seek to obtain a
pan-25 EU MS injunction from that court. A small number of
interviewees even drew parallels with the ‘US Eastern District of
Texas’ – a court which is often said to be notoriously ‘patent troll
friendly’.21 Interviewees noted that preventing this patent troll/
forum shopping fear from becoming a reality will likely require
maintaining close interplay between the local/regional courts and
the central divisions, and Court of Appeal.
One final point must be made about the risks of patent troll
litigation at the UPC. Notably, the rise of this form of litigation in
the USA is often linked to the absence of the ‘loser pays’ costs
system in that jurisdiction.22 On this point, one solicitor interviewee
argued that with respect to the UPC the NPE/patent troll issue has
‘probably been overstated’ because, unlike in the USA, any poten-
tial ‘troll litigants’ at the UPC ‘will be forced to pay their own

21
L. McDonagh and C. Helmers, ‘Patent litigation in England and Wales
and the issue-based approach to costs’, Civil Justice Quarterly 32 (2013), 369.
22
C. Helmers, B. Love and L. McDonagh, ‘Is there a patent troll problem
in the UK?’, Fordham Intellectual Property, Media and Entertainment Law
Journal 24 (2014), 509, 509–15, available at http://papers.ssrn.com/sol3/
papers.cfm?abstract_id=2331543.

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144 European patent litigation in the shadow of the UPC

costs’ – something which at present appears to discourage patent

troll litigation in the UK.23 Therefore, while the possibility of
obtaining a pan-25 MS injunction at the UPC is likely to attract
patent troll litigants – and some forum shopping does seem
inevitable – the presence of the ‘loser pays’ costs system at the
UPC is likely to alleviate the patent troll risk to some extent at
least.

Revocation of Patents

The interview data demonstrate that the ‘revocation risk’ works

differently from sector to sector: generally, concern about this risk
is much more apparent in the Pharma sector than in ICT.24 The
reason for this is that in the ICT sector companies tend to hold
numerous patents of mid-range value, and as a result the revocation
of a small number of patents is unlikely to have a drastic impact on
the value of the company’s overall portfolio. By contrast, one
solicitor interviewee noted that the ‘central revocation possibility is
the key worry’ for his Pharma clients; indeed, one in-house Pharma
counsel remarked that being exposed to ‘one-stop revocation’ could
prove very risky for Pharma companies because ‘if a key, valuable
Pharma patent is revoked this can affect the company’s share price
considerably’. He went on to explain that in the Pharma field ‘a lot
of key drugs are based on one big innovation’ per product, i.e. a key
single patent or a few key patents, further noting that ‘one bad
revocation decision’ could have a huge impact on a company’s
revenues.
There is little doubt, therefore, that establishing a high quality
body of revocation jurisprudence at the UPC is of the utmost
importance. On this point, it is worth recalling that currently within
Europe the UK is seen as the jurisdiction that undertakes the most

23
C. Helmers, B. Love and L. McDonagh, ‘Is there a patent troll problem
in the UK?’, Fordham Intellectual Property, Media and Entertainment Law
Journal 24 (2014), 509, 509–15, available at http://papers.ssrn.com/sol3/
papers.cfm?abstract_id=2331543.
24
None of the interviewees from the ENG sector highlighted revocation as
a concern.

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The UPC and the UP within the business and legal communities 145

stringent validity analysis.25 However, the UPC will not feature the
in-depth oral hearings commonly found at the UK’s PHC, and will
instead operate a ‘paper-based’ system, featuring relatively short
hearings, more akin to the litigation systems of Germany and the
Netherlands. Given that there has been, traditionally, a substantially
higher rate of patent revocation in the UK than in either Germany
or the Netherlands,26 there may be a correlation between the rate of
revocation and the type of hearing featured at the court (lengthy and
in-depth vs. short and paper-based). For this reason, it is possible
that the UPC will be viewed as a more ‘patentee-friendly’ court
than the UK’s PHC. Indeed, one interviewee stated that the UPC
‘will, on balance, favour rights-holders/patentees’ more than poten-
tial infringers/competitors.

Could Speedy UPC Revocations Help Clear the EPO Oppositions

Backlog?

As noted in the Annex, around half of all interviewees stated that

the availability of UPC revocation actions will likely help to ease
the EPO oppositions backlog. Indeed, one experienced UK PA
stated that in order to be successful the new UPC system must
‘crack the backlog problem’. However, around a quarter of all
interviewees said that they were not confident that the UPC will
actually help to alleviate the backlog. One major reason for this
scepticism is that taking a UPC revocation action is likely to prove
to be much more expensive than the current cost of opposing a
patent at the EPO – something that is likely to mean that many
businesses will continue to prefer the EPO route. In this vein, while
one experienced solicitor acknowledged that some oppositions may
effectively ‘move to the UPC’, he argued ‘crucially, there will be no
easing of the backlog’ because ‘clients will keep opposing despite
the UPC option’. In fact, one in-house ICT counsel remarked: ‘The
issue is that it will be possible to do both – to file an opposition in

25
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 46–51.
26
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 46–51.

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146 European patent litigation in the shadow of the UPC

the EPO and an invalidity action before the UPC. Opponents are
likely to do both especially in important cases.’
In light of the above, it is clear that the impact of the UPC in this
area will to some extent be tempered by the fact that businesses are
likely to choose to use both systems in parallel. Nonetheless, even
if opponents do challenge the patent at both venues, provided that
the UPC proves itself able to resolve invalidity actions in a speedy
fashion, there could well be a net overall reduction in the EPO
backlog over the coming years.

A Return to the National Patent Systems?

One solicitor interviewee argued that some companies could return

to the national patent systems if the UPC develops in a ‘problem-
atic’ way, though he noted that ‘within different sectors different
factors are at play’. For instance, he said that in the context of the
Pharma industry use of 25–28 national systems within the EU ‘may
be impractical and too expensive’ since Pharma companies tend to
patent in virtually all jurisdictions using the EPO route. However,
he argued that for those companies that currently only patent in 1–2
jurisdictions there may be a temptation to return to the national
systems. If this were to happen, he further noted that the UK IPO
would see an increase in patent applications. In other words, he
argued that the coming into force of the UPC ‘may have the
opposite effect than is intended’ – that rather than unifying the
practice of patenting in Europe, patentees may instead turn away
from the EPO and return to the national systems. On this point, a
highly experienced solicitor I interviewed argued that the UPC/UP
system really ‘has to be got right’ because ‘if the goal is to create
greater unity’ within the European patent system, getting the new
system ‘wrong’ – by failing to provide a high quality litigation
service at a reasonable cost – would have a ‘devastating’ impact on
efforts to achieve this goal of unity.
Regarding the likelihood of companies actually returning to the
national systems, an experienced Germany-based PA remarked: ‘At
the moment the pessimistic users are considering doing this, and it
might already have started.’
Indeed, one in-house ENG counsel confirmed that her company
had already decided to return to patenting solely in the national
systems of the UK and Germany. She stated that the key issue for

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The UPC and the UP within the business and legal communities 147

her company in this respect is that in their industry technological

innovations tend to have a commercial life of 5–7 years, which
means that as a company they need to obtain patents quickly. She
noted that if her company files an application at the EPO, the
delays ‘mean that we often don’t get a patent until 5–7 years down
the line’. Thus, her company’s decision to ‘go national’ was taken
largely because of problems with the existing EPC system – though
the interviewee also stated that she is not confident that the
UPC/UP system will improve things. Overall, therefore, while it
seems that a large-scale return to the national system is unlikely,
largely due to the costs issue, some companies will surely keep this
option open.
It must also be stated that despite the existence of some pessi-
mism, many interviewees expressed great hope that the UPC would
prove to be a success. Indeed, several interviewees stated that a
possible return to the national systems is being contemplated ‘only
as a last resort’.

THE OPT-OUT
As noted in Chapter 3, there is an option for an opt-out of EPs from
the UPC’s jurisdiction during the transition period of 7 or 14 years.
If opted out, an EP will only be litigated at the national level.

The Unfamiliar UPC: How to Adapt to the New System?

A point that emerges strongly from the interview data is that

businesses – in every sector – are generally wary of the new
system. Even though the current fragmented system has its prob-
lems, businesses and lawyers are at least familiar with it at the
procedural and substantive levels. It is known, for instance, that if a
company wishes to challenge the validity of a competitor’s patent,
filing a UK revocation action is a strong statement of intent. On the
other hand, if a company wants to obtain an injunction against a
competitor for allegedly infringing a patent, taking a case at one of
the German regional courts represents the best option. In line with
this, one solicitor interviewee argued that under the current frag-
mented system businesses already possess an adequate EU-wide

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148 European patent litigation in the shadow of the UPC

ability to ‘interfere with competitors’ wherever the actions of their

competitors are infringing.
By contrast, the new system is unfamiliar and it also lacks
certainty with respect to its procedures and jurisprudence. For this
reason, one solicitor interviewee stated that his clients are taking a
cautious view of the UPC. He remarked that ‘most would like to
opt out and if it is easy to do so they will’. Nonetheless, for most
businesses the final decision on whether to opt out had not been
made at time of interview; indeed, 13 out of 15 in-house counsel I
spoke to stated that their companies had not yet made their decision
regarding the opt-out. These interviewees emphasized that no
decision in this regard could be made until all the details regarding
how the UPC will actually work in practice were finalized (some-
thing that did not occur until the post-interview period, in late
2015).
Nevertheless, even though in most cases final decisions had not
yet been made, all the in-house counsel I interviewed stated that
their companies were seriously considering opting out at least some
of their patents. However, several interviewees noted that the (then
proposed) opt-out fee would mean that companies would likely not
be able to opt out everything in their portfolios. The impact of the
fact that there will not be an opt-out fee after all is considered
further in the next chapter. Interestingly, the interview data given in
the Annex show that while all interviewees were preparing to opt
out some or all patents, just over half were planning to keep at least
some patents within the UPC’s jurisdiction – for example, the
‘strongest’, the ‘least valuable’ or a ‘broad spectrum across the
value range’.
With respect to the patentees who were considering opting out
only their most valuable patents (MVPs), one in-house Chemicals
counsel stated that his company would probably opt out their
‘crown jewel patents’. Nonetheless, he asserted confidently that
‘more than 90% of our portfolio will be in’. Regarding the making
of this determination, he remarked: ‘It’s a question of the advantage
of being able to get an injunction versus the risk of having a
valuable single patent revoked.’
The importance of this consideration was confirmed by an
in-house Pharma counsel, who stated that Pharma companies would
probably opt out their MVPs due to the pan-25 EU MS revocation
risk at the UPC. However, he said that his company would probably

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The UPC and the UP within the business and legal communities 149

decide to keep within the UPC the patents they hold over consumer/
household products because these patents are less valuable.
Meanwhile, all the interviewees from the legal community stated
that they expect their clients to opt out at least some patents, though
none said that they expect their clients to opt out everything. For
instance, one German-based lawyer I interviewed stated that she is
advising her clients to ‘opt out their most valuable patents and test
the system with their mid-range value patents’. By contrast, a small
number of interviewees stated that it is not a question of whether or
not to opt out a company’s MVPs; rather, it is a question of whether
or not to keep within the UPC the strongest patents in the
company’s portfolio. Indeed, one experienced Germany-based PA
remarked: ‘I advise my clients to opt in strong patents.’

How will an Opted-out Patent be Perceived by Competitors?

As noted above, one German PA I interviewed stated that he was

advising his clients to keep ‘strong’ patents within the UPC (to
avail of one-stop enforcement), and to opt out ‘weak’ patents (to
avoid the one-stop revocation risk). This raises the very interesting
question of how patents opted out of the UPC will be perceived. On
this very point, one interviewee – an experienced solicitor – stated
that some of her clients fear ‘that an opted-out patent will be
perceived as weak, and thus might be attacked by competitors’ (via
litigation undertaken in one or more EPC jurisdictions). This is an
important insight into the way the UPC/UP reforms are likely to
alter the European patent litigation paradigm; indeed, the coming
into force of the UPC could create a two-tier patent litigation
system, with patents that are perceived as being of ‘high quality’
dealt with at the UPC, and patents that are perceived as being of
‘low quality’ dealt with by national courts.

Do EU and Non-EU Businesses View the New System Differently?

One additional point needs to be made regarding the opt-out

decision: it appears that there is a difference in attitudes to the new
system between EU and non-EU businesses. Several interviewees
from the legal community stated that their non-EU clients are
taking a more positive view of the UP/UPC system than their EU

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150 European patent litigation in the shadow of the UPC

clients are. One interviewee stated that the reason non-EU com-
panies tend to be upbeat about the UP/UPC is that they see the EU
as a unitary market, and thus they want unitary protection; EU
companies, on the other hand, tend to be more invested in, and
more familiar with, the national systems, and thus are more
resistant to change.

BUSINESS SECTOR ISSUES

As noted in Chapter 3, the central divisions of the UPC are divided
between Pharma/Chemicals (London), Engineering/Mechanical
(Munich) and everything else, including ICT (Paris). It is worth
considering whether the impact of the reforms will affect some
sectors more than others, and whether it will affect the various
sectors in different ways.

Which Sector will Benefit the Most from the New System?

Since Pharma companies tend to patent in all EU MS, there does

appear be at least one major long-term benefit of the UP for the
sector – a ‘cost and simplification’ benefit. Conversely, this benefit
will not be felt so keenly in the ICT sector, because ICT companies
tend not to seek EU-wide patent protection; indeed, they often seek
protection in only 2–4 EU MS. Similarly, interviewees from the
ENG sector noted that their companies rarely obtained patent
validations in more than 3–4 MS, and sometimes only in 1–2 MS.
As such, like ICT companies, ENG companies are unlikely to
benefit greatly from the wider protection offered by the UP.
Nonetheless, a German-based PA argued that the ICT and ENG
sectors are still likely to benefit from the UP in the sense that the
UP will ‘allow more efficient patenting’.
There may also be a benefit for the Chemicals sector since
Chemicals companies tend to patent in up to 8 MS (meaning that in
some cases it would still be worthwhile to get the UP even if the
renewal fees were set above the 3 MS level). On this point, one
interviewee remarked: ‘For Chemicals the price is key – the costs
must not outweigh the benefits.’
Overall, therefore, for Pharma companies – and, to a lesser
extent, for Chemicals companies – utilization of the UP will greatly

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The UPC and the UP within the business and legal communities 151

simplify the process, and cut down on the costs, of obtaining wider
patent protection in Europe. However, as noted above, there is also
a major disadvantage for the Pharma sector which tempers this –
namely, the potential for a highly valuable single Pharma patent to
be revoked across 25 EU MS.
Despite the revocation risk, Pharma is likely to benefit from the
ability to enforce the UP centrally at the UPC. For instance, one
German-based lawyer stated that Pharma will benefit from the
ability to get a 25 EU MS-wide injunction. Conversely, as noted
above, the great fear in the ICT sector relates to the ‘injunction
risk’ (and the related concern that there will be a growth in patent
troll litigation at the UPC). Indeed, one interviewee noted that
Pharma may benefit more than ICT precisely because ‘there is less
risk of troll litigation in Pharma’ than in the ICT sector. Nonethe-
less, the same interviewee argued that overall the UPC is likely to
benefit all patentees, including those in ICT and ENG.
So while it can be observed that the UPC ‘revocation risk’ is a
major fear for the Pharma sector, a clear benefit can be seen for
Pharma with respect to obtaining wider protection, more efficiently,
for lower costs via the UP. To some extent, this appears to be the
view in the Chemicals sector as well, though the renewal and
litigation costs remain a major concern. For the ICT sector, the
wider protection offered by the UP is viewed positively, though the
interviewees stressed that the wider protection is not worth paying
more than a 3 MS renewal fee for. More importantly perhaps, the
ICT sector appears to be very wary of the combination of the
‘bifurcation/injunction risk’ and the ‘patent troll risk’. Companies in
the Engineering sector, meanwhile, appear to be fairly ambivalent
towards both the UPC and the UP, and they are undertaking a major
review of the costs involved before committing to either.

SMEs in the New System

With respect to SMEs, three key concerns came up in the inter-

views – cost, the revocation risk, and the injunction risk. Regarding
the costs of the UPC, the in-house ICT SME counsel stated that
‘the costs associated will be fundamental in deciding whether it is
worth going down this route’. This was also noted by a UK PA I
interviewed who remarked: ‘The main issue for the SMEs is cost.’

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152 European patent litigation in the shadow of the UPC

As part of the discussion of the value-based system, a total of

seven interviewees – two in-house counsel (one Pharma SME and
one Pharma) and five lawyers – noted that some form of value-
based system could benefit SMEs. For instance, a German-based
lawyer I interviewed argued that the value-based fee system could
help to encourage SMEs to use the system – provided that the
parties can agree to set the fees at a low value.27 Similarly, an
experienced solicitor remarked that the value-based fee system will
give SMEs ‘the option of using the court at a reasonable cost’. This
was echoed by an experienced patent attorney I interviewed who
stated that the value-based fee could prove to be beneficial to SMEs
if in practice it works to ‘cap’ fees for low-value cases. On this
point, it must also be noted that if the value of the case does not
reach the value-fees threshold, only fixed fees will be payable –
something that may give SMEs the option of litigation for lower
value cases (provided that the SME can afford the fixed fees).
On this point, one PA I interviewed stated that the idea of a
‘small-claims track’ (SCT) for the UPC, similar to the one that has
been successfully brought into the UK Intellectual Property and
Enterprise Court (IPEC) – though the IPEC SCT does not apply to
patent cases – ought to be explored by the planners/organizers of
the new system.
However, the in-house Pharma SME counsel I interviewed
expressed scepticism about the usefulness of the value-based fee in
this regard. She said that SMEs tend to be risk-averse and litigation-
averse, noting that ‘SMEs tend not to go to court at a multi-
jurisdictional level unless the case is of high value, so a value-based
fee may not benefit SMEs that much’. She further remarked that
Pharma SMEs ‘tend not to go to court at all for low value claims’.
Indeed, while she acknowledged that some SMEs would be open to
the idea of a UPC SCT for SMEs, she nonetheless stated that she
did not think that her firm would necessarily choose to avail of it,
given that they seek to avoid litigation wherever possible.

27
A similar point is made in Bardehle Pagenberg, ‘Unitary patent and
Unified Patent Court’ (2013), 1, 19, www.bardehle.com/fileadmin/content
documents/broschures/Unitary-Patent_Unified-Patent-Court.pdf.

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The UPC and the UP within the business and legal communities 153

With respect to the UP, the level of the renewal fees is of

significant concern to SMEs in the UK and elsewhere in Europe.28
One UK PA I interviewed remarked: ‘Most SMEs are looking to
protect their inventions in a small number of member states … the
UP is likely to be more expensive than the current system for
SMEs.’
With respect to specific fee levels, the in-house Pharma SME
counsel stated that setting the renewal fee at the 3 MS level ‘would
create a very powerful incentive for SMEs to use the UP’. Simi-
larly, a UK PA I interviewed also argued that a 3 MS fee would
certainly provide an incentive to SMEs; but he warned that any fee
over the 3–5 level would actually create a serious disincentive to
use the system. Indeed, from the above analysis it appears that the
absence of either a fee set at the 3 MS level – or, alternatively, a
reduced fee system for SMEs – there is likely to be a serious lack
of incentives for SMEs to obtain UPs, something that is further
noted in the next chapter.
Regarding the revocation risk, the in-house Pharma SME counsel
I interviewed remarked that ‘there is a strong culture of risk
aversion amongst SMEs … and the possibility of a patent being
revoked is worrying’. She stated that if an SME were to have a
patent revoked within the UPC system, ‘this could be fatal’ to the
company’s finances. As a result, she argued that Pharma SMEs
ought to seriously consider opting out their MVPs. Similarly, the
in-house ICT SME counsel remarked that ‘it will be necessary to
assess the strength of the patent concerned to ascertain its suitabil-
ity for use in a potential bifurcated process’. He argued that unless
‘there is clear guidance provided to Courts and judges that will
deliver consistency, it is likely that my company’s strategy will be
to wait and see before risking valuable company intellectual prop-
erty to courts and proceedings where the outcome is uncertain or of
variable quality’. In particular, he said that in the absence of clarity
regarding how procedures of the UPC will work – and with fears
over the quality of decisions – ‘risking “crown jewel” patents to the
system may be hard to justify’. On a more positive note, while he

28
On the issue of SMEs and renewal fees, the PA firm EIP recently
published a paper noting that generally SMEs validate and renew patents in
fewer MS than larger companies – EIP, ‘Europe’s unitary patent system: a
horse designed by committee’ (2014), 1, 1–13.

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154 European patent litigation in the shadow of the UPC

noted that there would inevitably be a period of uncertainty at the

beginning, he remarked that ‘with upfront guidance and directions,
this period hopefully will be kept to a minimum, and users will be
able to get involved with the system earlier and with confidence as
to the quality of the decisions’.
With respect to the interplay between EPO oppositions and UPC
revocations, the in-house Pharma SME counsel stated that for
SMEs ‘it is not necessarily a good thing that revocation can happen
more quickly at the UPC than at the current EPO hearings’. The
reason for this is that for an SME – especially if it is seeking
investment – having a patent application listed as ‘pending opposi-
tion’ is generally seen in a more positive light than having applied
in earnest for a patent which was then speedily revoked.
Regarding injunctions, one solicitor interviewee stated that
‘SMEs are very concerned about the possibility of pan-EU injunc-
tions’. He noted that while the impact of such an injunction would
merely reduce revenues at a large multinational company, and
perhaps affect the company’s share price, the impact of a pan-EU
injunction ‘would be absolutely devastating for an SME’. This point
was echoed by an experienced in-house ENG counsel, who stated
that ‘a pan-EU injunction would be fatal to most SMEs – they
could not survive it’. Conversely, while the in-house Pharma SME
counsel acknowledged this risk, she nevertheless argued that SMEs
do, in fact, want the ability to obtain such pan-25 EU MS
injunctions against competitors/potential infringers.
SMEs, therefore, share many of the primary concerns of the
larger companies regarding the UPC. However, the major difference
for SMEs viz. larger companies is the scale of the risk involved.
The revocation risk is substantial for SMEs because the loss of a
single patent across 25 EU MS could prove to be fatal to a
company’s prospects. Similarly, if a European SME is hit with
a pan-25 EU MS injunction preventing one of its products being
sold in the EU, this too could be a fatal blow, as an SME is less
likely to have a strong foothold in other large markets such as the
USA and Asia – something that would cushion the revocation blow
for larger companies. Nonetheless, SMEs do see potential positives
in the new system – particularly with respect to the ability to
centrally enforce their own patents at the UPC.

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The UPC and the UP within the business and legal communities 155

Are Stakeholders in the Various Sectors Well Informed on the

UPC/UP?

At the time of interview, it was notable that stakeholders – with no

apparent difference between sectors – appeared to be well informed
about the UPC/UP. Indeed, most interviewees noted that they had
read at least some official UPC documents online, including the
various drafts of the UPC Rules of Procedure. Furthermore, several
interviewees stated that the UK IPO had presented them with
additional information.

Location of the Central Divisions

With respect to the London-based UPC Central Division, all the

in-house Pharma counsel stated that this is a positive of the new
system. Moreover, one experienced solicitor argued that the exist-
ence of the UPC division would benefit the Pharma sector since
‘there’s a great deal of expertise in London’. He stated that ‘London
is a centre of excellence’ in the Pharma patent field and that the
location ‘is likely to be influential’ in this positive way ‘even if the
panels don’t feature a majority of English judges’.
Conversely, the non-Pharma interviewees stated that they have
some minor concerns about the locations of the other courts. For
instance, one in-house ENG counsel stated that she ‘is a little
concerned’ that the Munich Central Division ‘might bifurcate more
than the other divisions’. Similarly, some interviewees from the ICT
sector expressed concern about how the Paris Central Division will
operate. Nonetheless, a large proportion of interviewees stated that
they did not think that the location of the court will prove to be of
great importance, given that the judicial panels will consist of
judges from a variety of different countries and legal/technical
backgrounds.

WHAT WILL THE IMPACT OF THE REFORMS BE

ON THE LEGAL COMMUNITY?
One solicitor interviewee remarked that ‘the UPC will bring big
changes to the law profession’, noting that ‘most major industries

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156 European patent litigation in the shadow of the UPC

are global, and multi-national litigation has become the norm’. He

argued that all law firms ‘will have to engage with the UPC’ and
that ‘the British and the German firms will probably come to
dominate’ at the expense of firms in other territories – including
even in France – since English is likely to become the dominant
language of litigation at the UPC. This point was also made by a
Germany-based lawyer I spoke with, who noted that ‘there won’t be
a great change for a German lawyer other than English becoming
the main language of patent litigation, as clients will likely expect
their lawyers to plead in English’. She noted that this will be a
major challenge for the older generation of German lawyers, who
may be unwilling to spend time mastering the English language.
With respect to patent attorneys, an experienced Germany-based
PA stated that the PA’s job would not change much. However, he
noted that ‘for advocates, litigators and judges there will be a great
deal of change’ as the new system will establish, for the first time,
EU-wide competition in litigation. He further remarked: ‘Since the
EPC came into force there has been EU-wide competition for PAs,
but the litigators are not used to it, and it will come as a bit of a
shock to the system.’
Continuing with the idea of competition in the litigation field,
another German-based PA I interviewed stated that large law firms
would probably benefit from the UPC reforms more than smaller
ones, noting that the tight time schedule envisaged by the UPC will
require a great deal of resources, and especially manpower, to be
expounded, noting that ‘only large firms will have these resources’.
Two solicitor interviewees noted that members of the UK IP Bar
could struggle to adapt to the UPC. They argued that solicitors ‘are
probably better placed’ to work within the UPC system than
barristers because the UPC will operate ‘a continental-style, paper-
based system’, featuring short hearings rather than the in-depth
hearings that frequently take place at the PHC.
Both of the UK PAs I interviewed stated that their jobs would
probably become more complex, and that costs for PA firms would
inevitably rise. For instance, one PA interviewee argued that the
new UPC system would increase costs for PA firms, and that firms
may have to absorb some of these costs (though he acknowledged
that some would inevitably be passed on to clients). Moreover, he
remarked that for PAs the amount of work ‘is likely to increase’
since a 25-MS UP will mean ‘there are many more countries to

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The UPC and the UP within the business and legal communities 157

monitor’, further noting that ‘examining diligent use within all of

these member states will be a huge challenge’. The same inter-
viewee stated that for some PAs there may be a big change in terms
of representing their clients in court – though he acknowledged that
the rules for when and how patent attorneys (as opposed to
solicitors/barristers) may represent their clients before the UPC had
yet to be finalized.29 Indeed, a further two non-PA interviewees
remarked that it would be important that PAs have the right to
represent their clients at UPC hearings, stating that this would be of
great benefit to their profession.

SUMMARY OF KEY ISSUES FOR USERS OF THE

NEW SYSTEM
From the above, it is clear that the issues of (i) judicial
composition/quality and (ii) the costs of litigating at the UPC and
obtaining and renewing UPs are paramount. Also of great concern
are the risks of the new system – pan-25 EU MS injunctions,
pan-25 EU MS revocations, patent troll litigation and forum shop-
ping. The issue of how SMEs may fare at the UPC is an additional
worry. In Chapter 5, I outline and assess these issues further and
highlight the progress that has been made since 2014 in setting up
the UPC and the UP.

29
www.unified-patent-court.org/images/documents/Draft-EPLC-2015-07-
01-final-clear.pdf.

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5. Conclusion
THE UPC OUT OF THE SHADOWS: LOOKING
AHEAD TO 2017
This concluding chapter presents a number of observations about
the key elements of the Unified Patent Court and the Unitary
Patent, referring to the empirical data examined in Chapter 4 and
also looking at how the issues raised by interviewees in 2014 have
been dealt with since then, with a view to the UPC’s launch in
2017.

UPC Observations

Judicial composition and quality at the UPC

The issues of judicial composition and quality are crucially import-
ant for three major reasons: first, there are substantial concerns
amongst potential litigants over bifurcation and the granting of
injunctions – concerns that are felt particularly keenly by com-
panies in the ICT sector (though much less by those in the Pharma
sector); second, the possibility that a valuable single patent could be
revoked across 25 EU MS is a major concern, especially for
Pharma companies (though this concern is felt much less by
companies in the ICT and ENG sectors); third, forum shopping is
likely to occur, to some extent at least, within the UPC – and
companies in all sectors have concerns about the maintenance of
common standards across the UPC, especially with respect to local
divisions operating in jurisdictions that do not have an established
history of patent litigation.
The interview data show that those in the business and legal
communities are unlikely to support the UPC unless the judges
make consistent, balanced decisions. Indeed, ‘the technical capabil-
ity of judges’ and ‘the quality and predictability of decision
making’ are the most important considerations for potential users of

158
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Conclusion 159

the UPC.1 Put simply, concerns about bifurcation, injunctions,

revocations and forum shopping can only be alleviated by effective
judicial decision making. The process of sorting out applications
and making judicial appointments is at time of writing ongoing.
Establishing and maintaining judicial quality across the UPC can
be achieved by (a) co-ordinating and training judges and (b) via the
composition of strong judicial panels. Since 2014, much progress
has been made on this front and it is expected that the judicial
panels will be of very high quality.2

Litigation costs
Under Article 36(3) of the UPC Agreement the UPC system has the
‘objective of a self-financing Court with balanced fees’. This brings
great challenges. The negotiations at the UPC Preparatory Commit-
tee over fees, only resolved in early 2016, were focused on meeting
the twin goals of allowing the UPC to function effectively and
allowing access to justice for litigants, especially those with fewer
resources, such as SMEs. In accordance with Article 36(3), the
UPC fees, as finalized, will be based on a hybrid system – there
will be both a fixed fee and a value-based fee set above a
pre-defined ceiling.3 The fixed fee for filing an infringement
claim/counter-claim (or a declaration for non-infringement) at the
CFI of the UPC will be €11,000; while a revocation claim will cost
€20,000 to file.4 These same fees will apply, as relevant, when an
appeal on one of these issues is sought at the Court of Appeal of the
UPC.
For infringement claims/counter claims (and claims for a declar-
ation of non-infringement), an additional value-based fee will also

1
Powell Gilbert, ‘Responses to UPC survey 2014’ (March 2014), ques-
tion 12.
2
See the description of UPC judicial training at www.ceipi.edu/
index.php?id=14370&L=2.
3
The final fee schedules is accessible here – http://unified-patent-court.
org/sites/default/files/guidelines_for_court_fees_and_recoverable_costs.pdf.
4
The fee for a counter-claim of revocation will be the same as for an
infringement action, subject to a fee limit of €20,000 – as stated in the note
accessible at http://powellgilbert.com/press/2016.03.04%20UPC%20note.pdf.

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160 European patent litigation in the shadow of the UPC

be levied, along a sliding scale, where the value of the case is above
€500,000. For example, a case with a value of €1,000,000 will
result in a value-based fee of €4,000; while a case with a value of
€50,000,000 will result in a value-based fee of €250,000. For any
case with a value above €50,000,000 the value based fee will be
€325,000.
In addition to laying out the fees, the UPC Preparatory Commit-
tee also highlights a number of important aspects of the fees regime
– points that are likely to benefit SMEs in particular (as discussed
in detail further below):5

+ ‘Only one fixed fee and, if applicable, one value-based fee

shall apply in an action regardless of the number of claimants,
defendants or patents.’
+ ‘Small enterprises and micro-enterprises are entitled to pay
only 60% of fixed and value-based fees.’
+ ‘If an action is heard by a single UPC judge, the party liable
for the court fees will be reimbursed by 25%.’
+ ‘Withdrawal or settlement of an action will usually entitle the
party liable for the court fees to be reimbursed a proportion of
the fees.’
+ ‘Fees that “threaten the economic existence” of a party may
be wholly or partly reimbursed.’

With regard to recoverable costs, the UPC will feature a ‘ceiling’

system with a sliding scale of values. For example, for cases with a
value up to €250,000 costs are recoverable up to a ceiling of
€38,000, while for cases with a value of €1,000,000 up to €112,000
may be recovered. For cases with a value greater than €50,000,000
up to €2,000,000 may be recovered. The UPC will apportion costs
proportionally in the case of a partial success, and will retain the
power to raise or lower the costs ceilings depending on the
circumstances: it might be appropriate to raise the ceiling if
the case is especially complex; while alternatively, it might be
appropriate to lower the threshold if there is an economic threat to

5
As stated in the note accessible at http://powellgilbert.com/press/
2016.03.04%20UPC%20note.pdf.

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Conclusion 161

the existence of a party involved in the litigation, such as an SME,

a non-profit organization, a university or an individual.
With the UPC fees system in place, several interesting points can
be noted with respect to the interview data analysed in Chapter 4. It
is worth recalling that while some interviewees expressed the hope
that the UPC will lead to lower overall costs for patent litigation in
Europe, several other interviewees expressed the fear that the costs
of patent litigation in Europe will in fact increase.
Two things are of significance here – the court fees and the
private legal costs.
With respect to court fees it is worth noting that, if, as one
interviewee argued, the UPC effectively moves the majority of
European patent litigation from the German system to the UPC, and
the UPC fees end up being higher than the current German fees,
then the overall court fee cost of litigation within the EU will go
up. For this reason, several interviewees argued strongly that the
UPC fees ought not to be as high as the current German fees –
though others stated that combined court fees of around 1–2 MS
would be reasonable.6 The final UPC fees regime, detailed above,
appears to strike an appropriate balance – the fees are not broadly
out of alignment with the equivalent German court fees, and the
UPC fees represent a value saving when the combined current court
fees of both Germany and the UK (post-April 2015) are taken into
account.
With respect to private legal costs, although the absence of
lengthy, UK-style oral hearings at the UPC is likely to keep costs to
a relatively low level when compared with the current UK private
legal costs, one point that emerged strongly from the interviews was
the fear that the private legal costs of litigation at the UPC could
nonetheless end up being quite high, given the wide remit of the
court’s jurisdiction, and the amount of resources that will need to be
expounded in order to meet the short deadlines required by the
court. Despite this, several interviewees expressed hope that there
would be an effective, balanced costs system, with recoverable
costs capped at a range of ceilings.

6
As noted in Chapter 2, since the interviews took place the UK’s court
fees have been increased substantially, something which means that parallel
patent litigation in the UK and Germany now costs more than it did in 2014.
The interviewee responses must be considered with this in mind.

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162 European patent litigation in the shadow of the UPC

As noted above, the final UPC costs system does indeed include
a well thought out cap on cost recovery – something that provides
each side with an incentive to keep costs down, while also
providing the option of raising or lowering the costs ceiling where
appropriate.

The opt-out decision

From the interview data, it appears likely that initially many
patentees will seek to opt out their most valuable patents (MVPs),
while keeping low and mid-range patents within the UPC system.
On the other hand, some lawyers are advising their clients to keep
within the UPC ‘strong’ patents, something that could create a
perception that opted-out patents are ‘weak’ and open to attack via
revocation proceedings.
Importantly, the proposed UPC opt-out fee – expected to be set at
€80 – has now been abandoned. This fee was disliked by patentees
because it would have effectively meant that patentees would have
to pay not to use the system.7 For the planners/organizers of the
new system, setting the fee level was undoubtedly a great challenge
– they knew that if they set the opt-out fee too high, it would
greatly annoy patentees; but if they set the fee at too low a level,
patentees may decide to opt out their entire portfolios – which
would leave very few cases at the UPC. Ultimately, the organizers
have decided there is no need for an opt-out fee. For patentees, this
is welcome, but it raises the possibility that there might be a mass
opt out of EPs from the UPC’s jurisdiction – something that would
likely mean that case levels during the earlier period of the court
would be low.

Forum shopping
One key argument advanced by the proponents of the UPC is that
the availability of a unified court will reduce forum shopping with

7
A. Johnson, ‘Opt-out fee for future Unified Patent Court is (unsurpris-
ingly) much too high’, Kluwer Patent Blog (2015), available at www.
kluwerpatentblog.com /2015/05 /15 /opt-out-fee-for-future-unified-patent-court-
is-unsurprisingly-much-too-high.

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Conclusion 163

respect to European patent litigation.8 At the UPC, litigants will

often have a choice of where to file the claim (e.g. where
infringement occurs in more than one Signatory State, or if the
defendant has a principal place of business in a different state to
where the infringement occurs).
Interviewees noted that the UPC may give rise to an internal type
of forum shopping if local and regional divisions differ drastically
in their willingness to grant pan-25 EU MS injunctions, and/or to
bifurcate the infringement and validity proceedings. In line with
this, ‘plaintiffs may select a Division which they expect to be
generally patentee-friendly in its judgments and which will conduct
the litigation quickly and in a manner which keeps costs low’.9 As
Sir David Kitchen argues, only a strong Court of Appeal can
prevent this forum shopping risk from developing into a serious
problem for the UPC system, and thus for innovative businesses in
general.10

Patent trolls
The UPC could be more attractive to NPEs, or patent trolls, than
the current fragmented European system is. Patent trolls are likely
to attempt to take advantage of the uncertainty that will necessarily
come with the setting up of a new, untested courts system. The
possibility of obtaining a pan-25 EU MS injunction against, for
example, an ICT firm is also something that could be attractive to
patent trolls. Interviewees from ICT companies expressed concern
that if forum shopping occurs within the system, some local/
regional courts may attempt to attract business by becoming overly
patentee-friendly. Conversely, a small minority of interviewees
stated that the availability of forum shopping may actually increase
the quality of the system, if it works as it currently does in
Germany. Moreover, several interviewees from the legal community

8
K. Cremers, M. Ernicke, D. Harhoff, C. Helmers, G. Licht, L.
McDonagh, et al. ‘Patent litigation in Europe’, ZEW Discussion Paper No.
13-07 (2013), 1, 1–6.
9
Hoffmann-Eitle, The EU Patents Package Handbook: A Practioner’s
Guide (Munich: Hoffmann-Eitle, 2014), 33.
10
Sir David Kitchen, ‘Introductory remarks: a judicial perspective’, in J.
Pila and C. Wadlow (eds), The Unitary EU Patent System (Oxford: Hart, 2015),
1–8, 4–5.

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164 European patent litigation in the shadow of the UPC

stated that the risk of patent troll litigation has been ‘overstated’;
indeed, the patent troll risk is somewhat mitigated by the presence
of the ‘loser pays’ system at the UPC.
Nonetheless, the very existence of (a) a new and uncertain court
system and (b) pan-25 EU MS remedies at that court is likely to
attract patent trolls. There is not a lot the UPC organizers can do
about either of these factors. Instead, in order to prevent trolls
becoming an issue for the UPC, the organizers’ focus on maintain-
ing judicial quality across the system will be of critical importance.

UPC revocations
The EPO oppositions backlog is seen as a problem by patentees,
but the interview data show that there is general scepticism amongst
stakeholders that the existence of UPC revocation actions will help
to substantially ease the backlog. Indeed, it is likely that the validity
of patents will be challenged via both procedures, i.e. those who
seek to challenge will both oppose patents at the EPO, which will
be a lengthy process but a cost-effective one, and take action at the
UPC, which will be speedy, but more costly.
Yet, if the costs of litigation at the UPC are kept down to a
minimal level – and the ceilings on recoverable costs should help
here – this should encourage revocation actions, which should in
turn help to (partially) ease the EPO’s opposition backlog. At the
same time, there is a danger that patentees will lose trust in the
court if patents are perceived as being revoked too easily at the
UPC; as above, maintaining a consistent and reliable UPC judiciary
can ensure this does not happen.
Ultimately, despite the existence of parallel oppositions at the
EPO, there is likely to be a net reduction in the EPO backlog,
provided that the UPC can deliver high quality, speedy decisions,
something that will only become apparent once the UPC is up and
running in 2017.

SMEs at the UPC

The interview data show that in the early days SMEs are likely to
take a very cautious view of the UPC, given the fact that SMEs
tend to be ‘risk averse’, and they tend to avoid litigation where
possible. Moreover, the costs of the new system are likely to hit

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Conclusion 165

SMEs the hardest.11 Having said that, the system of UPC fees
reduction noted above, combined with the ceilings on recoverable
costs (which can be lowered further in the case of an SME), should
give SMEs confidence that the new system has been designed with
their concerns in mind.
Crucial for SMEs will be the quality and consistency of judicial
decision making at the UPC – particularly in the context of
revocations and injunctions – because the scale of the risks involved
is greater for SMEs than for large enterprises and multinational
corporations. As one interviewee noted, an injunction granted
against an SME could be fatal to its business prospects. Ensuring
consistent judicial standards are maintained across the UPC –
particularly with regard to injunctions – will give all companies,
including SMEs, confidence in the system.
Finally, if in the future further reforms to the UPC are thought
necessary in order to aid SMEs, it would be worth taking account
of the success of the UK’s IPEC in recent years at attracting
relatively low-value patent disputes, perhaps even in the incorpor-
ation of an SME-centred small-claims court or track into the UPC
system.12 However, in this regard, it is also worth bearing in mind
the normative possibility that efforts to encourage SME litigation at
the UPC might actually create incentives to litigate that were not
previously there, something that might take SME energy away from
more innovative activities.13

London’s Central Division

There is a general expectation among stakeholders that the London-
based court will prove to be a good thing both for the legal
community in London and for Pharma more generally. London is
seen as a hub of expertise in the Pharma-legal area, and the UPC
will add another important institution to this environment. A

11
Sir David Kitchen, ‘Introductory remarks: a judicial perspective’, in J.
Pila and C. Wadlow (eds), The Unitary EU Patent System (Oxford: Hart, 2015),
1–8, 4–5.
12
C. Helmers, Y. Lefouili and L. McDonagh, ‘Evaluation of the reforms of
the Intellectual Property Enterprise Court 2010–2013’, A Report Commissioned
by the UK Intellectual Property Office (July 2015), 1.
13
C. Helmers, Y. Lefouili and L. McDonagh, ‘Evaluation of the reforms of
the Intellectual Property Enterprise Court 2010–2013’, A Report Commissioned
by the UK Intellectual Property Office (July 2015), 1.

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166 European patent litigation in the shadow of the UPC

building in Aldgate has now been chosen as the site of the UPC in
London.14 However, if the UK votes to leave the EU in the June
2016 referendum, it is likely the UK will no longer be in a position
to participate in the UPC, and the central division will have to be
relocated.

UP Observations

Renewal fees
At present, the vast majority of patentees (90%) validate in only
3–5 MS.15 It is thus easy to over-estimate the cost savings of the
UP when compared to the traditional EP. This is particularly clear
when the London Agreement is taken into account. Thus, the wider
protection offered by the UP must be viewed in light of the renewal
fees. This is because the interview data suggest that for many
businesses, particularly in the ICT and ENG sectors, the wider
protection is not considered worth paying increased patent fees for.
The exceptions to this are the Pharmaceutical and Chemicals
sectors, where the wider coverage provided by the UP will prove to
be of benefit even if the overall fees for renewing patents increase.
Regarding the specific fee level, several interviewees from the
ICT and ENG sectors argued that a fee set at the 3 MS level (UK,
German and French renewal fees combined) would provide a
reasonable incentive to use the system – both for large companies
and for SMEs. By contrast, interviewees noted that a fee set above
this level may lead some companies to continue to use the existing
patent routes rather than to seek to apply for UPs.
In mid-2015, the renewal fees were set at the ‘Top 4’ MS level.16
This is higher than the 3 MS fee that most interviewees argued
would be preferable in terms of encouraging uptake of the UP.
Since most ICT and ENG interviewees stated that their companies
do not seek protection in more than 3–4 MS, the Top 4 MS level
could be seen as the ceiling for some companies’ willingness to pay
(though the renewal fee level is seen as less important within the
Pharma and Chemicals sectors). Even setting the fees at this Top 4

14
www.gov.uk/government/news/upc-london-location.
15
Commission Staff Working Paper (Impact Assessment) SEC(2011)
482/2 (2011), 1, 17.
16
www.epo.org/news-issues/news/2015/20150624.html.

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Conclusion 167

MS level may not provide ICT and ENG patentees with an actual
incentive to use the new system, when considered from the perspec-
tive of initial financial outlay.
Further to this, when considering renewal fees it is important to
consider the issue of ‘selective’ patent pruning, as this will not be
possible with the UP. In other words, with the UP – unlike with the
EP – it will not be possible to drop expensive jurisdictions from the
overall patent validation portfolio. Some interviewees stated that
this is a negative aspect of the UP, as it may add to the cost of
maintaining a UP viz. the EP.
Having said that, there are, of course, other considerations
relevant to the setting of fees. It is debatable whether a view that
focuses solely on the renewal fee levels fully takes account of the
direct and indirect benefits of the wider coverage provided by the
UP, or the potential savings on administrative costs that could result
from the use of a more efficient, simplified patenting process.17
Indeed, there may be scenarios where the total costs to ICT and
ENG firms end up being lower under the UP even with a renewal
fee set at the Top 4 MS level. In terms of benefits, the IPO’s 2014
impact assessment report puts forward the argument that holding a
UP, as opposed to a bundle of EPs, may create the potential for
better access to finance for companies as it may be seen as a more
valuable asset.18
There are special arrangements to reduce the renewal fee costs
for SMEs and similar entities based in EU member states which do
not have an EPO official language (English, French or German),
and the EPO has said it will continue to review SME take up of
UPs as the system progresses, and may make further arrange-
ments.19 Overall, the Top 4 MS fee level, while not the optimal fee

17
Intellectual Property Office, ‘Unified Patent Court implementation:
unitary patent – impact assessment’ (March 2014), 1, 10–12, available at
www.gov.uk/government/uploads/system/uploads/attachment_data/file/317641/
IA_UPC_Implementation_Unitary_Patent.pdf.
18
Intellectual Property Office, ‘Unified Patent Court implementation:
unitary patent – impact assessment’ (March 2014), 1, 10–12. For an examin-
ation of patent-secured financing, see D. Harhoff, ‘The role of patents and
licenses in securing external finance for innovation’, Luxemburg, EIB Papers
14 (2) (European Investment Bank, 2009), available at www.eib.org/
attachments/efs/eibpapers/eibpapers_2009_v14_n02_en.pdf.
19
www.epo.org/news-issues/news/2015/20150624.html

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168 European patent litigation in the shadow of the UPC

recommended by interviewees, is just within their acceptable range;

and, moreover, it is lower than many patentees feared at the outset
of the new system. On this basis, taking account of everything
stated earlier, the UP should prove good value for money for
patentees.

UP member states
There is disappointment among stakeholders that the UP doesn’t
cover all 28 EU MS. Moreover, until the new system covers all EU
MS it is doomed to at least partial fragmentation – the exact
problem the system is intended to solve. Although achieving EU
unity seems unlikely in the short term given the current intransience
of Spain and Poland, this is a realistic medium-term aim once the
new system is successfully up and running. Moreover, given the
fact that the EU is increasingly seen as a unitary market (especially
by non-EU companies) it is an imperative that in the near future the
UP/UPC reforms are expanded to encompass every MS.

Legal profession observations

Regarding the effect the reforms will have on the legal community,
it seems that the language requirements of the UPC/UP are likely to
suit English-language firms. This will be of primary benefit to UK
law firms, but German law firms are likely to also do well out of
the new system. Moreover, the UPC will create for the first time
genuine EU-wide competition in the area of European patent
litigation. The emerging view is that larger firms will benefit over
smaller firms due to the amount of resources required to conduct
speedy patent trials. Moreover, in the UK context the fact that the
UPC will utilize more of a paper-based system, with short
hearings – rather than UK-style in-depth hearings – may well
benefit solicitors more than barristers. Patent attorneys (PAs) expect
that there will be an increase in costs for their firms; yet, PAs
welcome the fact that they will have the opportunity to represent
clients in court under the new European Patent Litigation Certifi-
cate system.20

20
www.unified-patent-court.org/images/documents/Draft-EPLC-2015-07-
01-final-clear.pdf.

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Conclusion 169

FROM FRAGMENTATION TO UNIFICATION?

ONWARDS TO 2017
The UPC and UP reforms represent the biggest changes to the
European patent system since the coming into effect of the EPC in
the 1970s. Of particular importance is the fact that the UPC aims to
unify European patent litigation – which currently works on a frag-
mented, national basis – by providing a one-stop enforcement system.
Yet, even though there is much that is laudable about the new
system, the problem of fragmentation of litigation will initially
persist in the forthcoming UPC system in two major ways: first, not
all EU member states are on board – only 25 out of 28 are UPC
Signatory States, which means enforcement in Spain, Poland and
Croatia will still require nation litigation; and, second, for at least
the first seven years patentees who hold EPO bundle patents (EPs)
will be able to opt out of the UPC system, and instead continue to
use the current system of national validation and litigation.21 Thus,
the reforms will initially result in an even more fragmented
litigation system in the 25 Signatory States, with the additional
layer of UPC litigation on top of the current national systems.
Another aspect relevant to fragmentation is the possibility that
patentees may turn away from pan-European patenting and return
instead to the national patenting systems. Some companies may
indeed choose to do this, but overall it seems unlikely this will be
possible on a large scale. The major reason for this is that the
national route is, by comparison to either the EP or UP routes,
highly expensive. Nonetheless, if the UPC/UP system develops in a
way that patentees do not like, it is possible that they will exercise
this option once the transitional period ends and the opt-out option
is no longer available – even if only for their most valuable patents.

21
The situation is further complicated by the fact that the establishment of
the UP falls within an area of European Union policy, and therefore signatories
to the EPC who are not EU MS, including a number of countries such as
Switzerland and Iceland, are not – and cannot, under CJEU, Opinion 1/09, OJ
C211/28 (2011) – be part of the new system. This means that even when every
EU MS is a party to the UPC, there will still be EPC MS outside the system.
This is unfortunate but there appears to be no way to solve this problem at
present.

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170 European patent litigation in the shadow of the UPC

On a more positive note, it is plausible that the UPC may help to

create a market for cross-border patent enforcement across the 25
UPC Signatory States, while the UP may come to be seen as a
much more valuable asset than either the current national patents or
the bundle EPs, something that could help patent monetization.
Furthermore, given the progress that has been made on the key issues
highlighted in 2014 by the potential users of the UPC/UP the expect-
ation is that, following the transitional period, the UPC will become
the primary patent court for Europe, featuring litigation involving all
EPs and UPs. Thus, the scheme’s ambition to unify the European
patent system is a realizable one in the long term.22 Moreover, should
the UPC and the UP prove to be a success, it is likely that in the future
the remaining member states of the EU that are currently not taking
part – Spain, Poland and Croatia – will join and participate fully in the
new system.
Despite this, it is also worth sounding the cautious note that the
UP and UPC reforms are unlikely to be a panacea for all of the
EU’s economic and innovation problems. For example, from an
examination of the EPO’s patent statistics, it is clear that most
patent applications are filed by US and Japanese companies, with
China and Korea also prominent; moreover, within the EU only
Germany, and to a lesser extent France, currently compete at this
world-class level.23 As Sir David Kitchen notes, the innovation
problem suffered by the UK and other EU MS will not be solved by
simply putting a new patent system into place.24 Even if it is easier
to get valuable patent protection across nearly all of the EU’s MS,
unless there are also changes in the EU’s research and development
culture – with more funding for scientific and technological
research being a key element – these root problems will remain for
the foreseeable future.

22
P. England, ‘In? Out? What’s it all about? Patent opt-out and withdrawal
in the UPC’, Journal of Intellectual Property Law & Practice 9 (2014), 10–17.
23
www.epo.org/about-us/annual-reports-statistics/statistics/filings.html.
24
Sir David Kitchen, ‘Introductory remarks: a judicial perspective’, in J.
Pila and C. Wadlow (eds), The Unitary EU Patent System (Oxford: Hart, 2015),
1–8, 4–5.

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ARTICLES, PRESENTATIONS AND REPORTS

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Annex: interview questions

In reading this summary of the questions and responses, it is
important to note that although 26 interviews took place, there were
actually 28 interviewees since two interviews were dual interviews,
in which the co-interviewees largely shared the same views (they
merely demonstrated different levels of expertise/experience in their
explanations). Moreover, both dual interviews involved in-house
ICT counsel. For this reason – and so as not to skew the data
towards the one sector over others – these interviews are counted as
being of ‘one perspective’ in the analysis given in this report.

I. INTERVIEWS 1–4
Revised Provisional Interview Questions

A. General questions for lawyers and non-lawyers alike

1 What, in your opinion, would be the perceived advantages of
both the new unitary patent and the proposed Unified Patent
Court system? (e.g. encouraging investment from outside
Europe? One-stop shop)
2 What would be the potential benefits to businesses? Do they
include competitive advantages or disadvantages in this
regard?

B. Specific questions for lawyers: solicitors/patent attorneys

3 (a) As a solicitor/patent attorney, how do you see your job
changing as a result of the new unitary patent reforms?
(b) What specific issues concerning the UP/UPC are of
concern to solicitors/patent attorneys, e.g. the right to
appear before the UPC?

177
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178 European patent litigation in the shadow of the UPC

The opt-in/opt-out option

4 As far as you are aware, are your clients considering the
opt-out? [Provide definition where appropriate]. From the
business point of view, what are the risks that you see of
applying for a unitary patent viz. the current European patent
system?
5 What sorts of considerations are patent attorneys making them
aware of, i.e. what factors would influence their decision to
opt out?
6 Alternatively, what factors would give them greater reason to
opt in?
7 Are patent attorneys concerned about the practical workings
of the system, e.g. how injunctions will be granted, bifurca-
tion, etc.? Are you aware that your clients are concerned?
8 Are there any other factors that will influence your company’s
decision to opt in/out? [prompt on judicial composition if
necessary]

Patent fees
9 The unitary patent will help inventors to protect their inven-
tions, including potentially benefiting from licensing arrange-
ments in all the participating jurisdictions (25) at a much
lower cost:
(i) If the fee were set at the equivalent of a bundle patent
renewed in three participating countries (UK, DE and
FR), do you think this would affect your clients’ uptake
of the unitary patent?
(ii) If the fee were equivalent to eight countries, do you
think this would affect your clients’ uptake of the
unitary patent? If so, how?
10 With respect to applications, do you think the unitary patent
will affect costs for your firm? If so, in what areas (renewal/
administration/enforcement)?
11 In your experience as a patent attorney, do clients have a
demand for protection in up to 25 member states? Why, in
your opinion, is this greater protection important (or not
important) to your clients?
12 How important are renewal fees in your clients’ patenting
strategies? Compared to other factors? Why?

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Annex: interview questions 179

13 Should increasing the level of annual renewal fees be used as

a way to encourage patents which are not being exploited or
generating an income to be dropped from the register (so
others can commercialize or innovate)?
14 What would be your ideal level for a reasonable UP annual
renewal fee?
15 Would the protection provided by a unitary patent or the costs
involved (e.g. no option to let protection lapse in certain
countries) alter the time you might keep the patent in force?

Court fees
16 How important are court fee levels to your firm and your
clients? For instance, if the initial court fee for filing an
infringement claim were set at the equivalent to filing a case
in four or five of the Signatory States, would this encourage
your clients to use the system? Would you consider this
correct, too low or too high? Will the level of fees affect
spurious claims? If so, how?
17 If this court fee were set at the equivalent eight or nine of the
countries, would this discourage legitimate claims from being
taken?
18 The UPC fees will be made up of both fixed fees and, after a
certain threshold, a value-based fee. What do you see as the
pros and cons of this sort of system?
19 You were asked above about whether the level of initial court
fee is of significance to your firm and your clients? How does
this compare to the significance of the private legal costs
involved?
20 Which sector of business, e.g. pharma, engineering, tech-
nology, do you think will benefit the most from the new
system? Which do you think will benefit the least?
21 Do you think there will be a ‘typical stakeholder’ who will
seek to use the new system?

C. Specific question for Pharma companies

22 Do you see any benefits or costs for the pharmaceutical sector
in having:
(i) a unitary patent?

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180 European patent litigation in the shadow of the UPC

(ii) a specialized divisional court for pharmaceuticals/

chemicals located in London?

D. Other questions (suggestions made by interviewees)

23 Is there anything else you think is of significance to the
current UP/UPC debate?
Two questions were suggested during the initial pilot interviews.
Both were included in the eventual list of interview questions for
the full project:
+ ‘Does the issue of the delays/backlog at the EPO concern
you? Could the fact that the UPC does not have to stay
proceedings pending EPO opposition help to ameliorate this
problem by effectively moving oppositions away from the
EPO?’
+ ‘Are you aware that the potential for opt-out of the system is
due to end after a transitional period (seven years, possibly
extendable to 14)? Afterwards, businesses seeking a European
patent will have to use either (a) the UPC system or (b) the
national patent offices? How would your business approach
this choice?’

II. INTERVIEWS 5–26

Final Interview Questions and Response Statistics1
Question 1 – General overview of advantages/disadvantages of the
new system

(a) What, in your opinion, do you perceive as the advantages of

(i) the new Unified Patent Court and (ii) the proposed unitary
patent?
(e.g. are there advantages to the existence of a one-stop shop? Is
there a need for wider protection in 25 MS rather than 3–4 MS?)
(b) Will your job as a solicitor/patent attorney change as a result

1
The responses discussed here refer to the pilot questions as well as the
final ones. Where it is necessary to distinguish between the two, this is done.

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Annex: interview questions 181

of the UP/UPC? (optional question, only for those in the legal

community)

Question 1 was designed as a general ‘kick off’ question, to begin

the interview on a relaxed note.2 This also enabled the interviewee
to flag up issues that could be explored further in the more detailed
questions which followed. In other words, this first question cap-
tured whatever immediately sprang to mind for the interviewees.3
The crucial issues raised here were discussed in greater detail with
respect to Questions 2 (Opt-in/Opt-out), 3 (UP renewal fees) and 4
(UPC fees).
In this respect, it is notable that while all 26 interviewees had
some initial thoughts on the UPC, the same is not true of the UP; 6
interviewees were only interested in talking about the UPC here,
and any thoughts they had on the UP they left for later on in the
conversation. This likely indicates that the UPC is more pressing in
the minds of interviewees. Of the 11 interviewees drawn from the
legal community – 2 UK PAs, 2 DE PAs, 6 UK solicitors and 1 DE
lawyer – 9 gave a comment in response to the optional question on
the possible effects of the new system on the legal profession.

Advantages of the UPC

With respect to the advantages of the UPC viz. the current system,
the most frequently made point was that there is a benefit to having
a ‘one-stop shop’ for enforcement in Europe; 12 out of 26 inter-
viewees cited this as an advantage.4 However, 9 interviewees out of
26 stated that they saw no clear advantages of the new system.

Disadvantages of the UPC

With respect to disadvantages, the most commonly cited issue was
that of the fees/costs of the new system – 10 out of 26 stated that
they thought the UPC would prove to be more costly than the

2
Question 1 closely corresponds to Questions 1–3 in the list of pilot
questions, as shown in the Annex.
3
All solicitors and patent attorneys are UK-based unless otherwise stated.
4
This was mentioned in the text of the question as a prompt as one
‘possible’ advantage, but this seems unlikely to have influenced responses –
interviewees were free to state that it was not an advantage, and 14 out of 26
chose to do so.

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182 European patent litigation in the shadow of the UPC

current fragmented system of national litigation. In addition, a

further 2 out of 26 interviewees expressed the view that there would
be no advantages at all to the UPC if the costs ended up being
higher than the costs of the current system.

Advantages of the UP
Of the 20 interviewees out of 26 who gave a view on the UP in
response to the first question, the most commonly cited advantage
was that of wider protection, which was cited by 9 interviewees as
being advantageous (though 2 of these 9 interviewees noted that
this was a benefit only for the Pharma sector).

Disadvantages of the UP
The most commonly cited disadvantage of the UP is that the
(expected) high level of the UP renewal fees is likely to make
obtaining and maintaining a UP more expensive than patenting in
only 2–3 MS; 7 interviewees out of 20 cited this as a major
disadvantage.

Question 2 – Opt-in/Opt-out

(a) Do you think your company/your clients will use the Unified
Patent Court or are you/they planning to opt out?
(b) What are the key issues your company/your clients are
discussing in this regard, e.g. concern over bifurcation,
injunctions, judicial composition.
(c) If your company/your clients are going to use it, how much do
you think they will use it, and what patents will they opt in to
the system?
(d) Once the transitional opt-out period ends, do you think your
company/your clients will use the UPC system, or will they
consider returning to the national patent systems in e.g. the
UK and Germany?

Question 2 was designed as a detailed question, focusing on

whether patentees are likely to opt in their EPs to the UPC, or

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Annex: interview questions 183

whether they will instead opt out of it and continue to use the
current system.5 All interviewees gave a response to this question.
Unsurprisingly, all interviewees, whether from the business and
legal communities, cited the prospective costs/fees of the UPC as an
important factor for determining whether to opt in or opt out of the
system.6 Almost all interviewees stated that the issue of judicial
composition is a crucially important one; 15 out of 15 in-house
counsel cited it as a significant factor, while 9 out of 11 interview-
ees from the legal community did the same.
Meanwhile, a total of 15 out of 26 interviewees stated that
bifurcation is a concern: 13 in-house counsel (6 ICT, 3 ENG, 2
Pharma, 1 ICT SME and 1 Pharma SME) but only 2 lawyers. In
addition, 13 out of 26 interviewees stated that they are concerned
about the UPC’s power to grant pan-25 MS injunctions – 9
in-house counsel (3 ENG, 4 ICT, 1 Pharma and 1 ICT SME) and 4
lawyers. A total of 7 out of 26 interviewees stated that they are
definitely concerned about patent troll litigation at the UPC – 7
in-house counsel (5 ICT, 1 ENG and 1 Pharma) and 1 lawyer. A
total of 10 interviewees out of 26 stated that they consider the
revocation risk at the UPC to be of significant concern – 6 in-house
counsel (1 ICT, 1 Chemicals, 2 Pharma, 1 ICT SME and 1 Pharma
SME) and 4 lawyers. Finally, 3 out of 26 interviewees – 1 in-house
ENG counsel, 1 in-house ICT counsel and 1 in-house Pharma
counsel – stated that the possibility that forum shopping will occur
in the UPC system is a major concern.
Regarding the possibility that patentees may choose to return to
the national patent systems following the transitional period if the
UPC system develops in a ‘problematic’ way, 23 interviewees
answered a sub-question on the issue.7 A total of 12 participants out
of 23 stated that even if businesses do not like the way the
jurisprudence develops at the UPC, a large-scale return to the
national patenting systems is not a real possibility. Of the 12, 8

5
This question corresponds to Questions 4–8 in the pilot questionnaire.
6
For the UP, the level of the renewal fees was said to be a crucial issue
(discussed in detail below with respect to Question 3).
7
This question was added after the first two pilot interviews at the
suggestion of a pilot interviewee so the first two interviewees did not give a
response. In addition, this question did not form part of the one truncated
interview conducted via email.

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184 European patent litigation in the shadow of the UPC

were in-house counsel (1 ENG, 2 ICT, 3 Pharma, 1 Chemicals and

1 Pharma SME) and 4 were lawyers. Conversely, 10 interviewees
out of 23 stated that a large-scale return to national patenting in
Europe is a real possibility. The 10 consist of 3 in-house counsel (1
ENG and 2 ICT) and 7 lawyers. The 1 remaining interviewee – the
in-house counsel at an ENG company – stated that the company
had already returned to the national patenting systems of the UK
and Germany due to the opposition backlog at the EPO system.

Question 3 – Patent Fees

(a) If the patent renewal fee were set at the equivalent of a bundle
patent renewed in three participating countries (UK + DE +
FR), do you think this would affect your clients’ uptake of the
unitary patent?
(b) Would there be a disincentive to use the system if the fee were
set at a higher level than this, e.g. 8 MS fees?
(c) What would be your ideal fee, e.g. 1–2 MS fees, 3 MS fees,
4–5 MS fees?
(d) Would you agree that annually increasing fees creates a
disincentive to renewing patents that are no longer creating
revenues, i.e. ‘pruning of the patent portfolio’?

The key aim of Question 3 was to discover what level of renewal

fees would provide an incentive for businesses to utilize UPs.
During the survey period, all interviewees gave a response to this
question – 25 interviewees out of 26 referred to specific fee levels,
while 1 further interviewee simply commented generally.8
Out of the 25 interviewees who gave a specified fee level figure,
a total of 17 stated that the renewal fees for the UP would provide
an incentive if set at the 2–3 MS combined fee level,9 but not if
they were set at a level above a 3 MS combined fee. These 17
participants can be broken down as follows: 10 were working as
in-house counsel and 7 were in the legal community. Of the 10

8
Question 3 corresponds with questions 9–15 in the pilot. The general
comment came as a result of the one truncated interview, conducted via email.
9
The example given in Question 3 above is the combined UK + FR + DE
renewal fees (the major patent jurisdictions). The interviewee in the truncated
interview was unable to provide a response to this question.

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Annex: interview questions 185

in-house interviewees, 2 were in the ENG sector, 4 were in ICT, 2

were in Pharma, and 2 worked at SMEs (1 ICT SME and 1 Pharma
SME).
Furthermore, an additional 2 out of 25 interviewees – 1 in-house
Pharma counsel and 1 UK solicitor – stated that in order to provide
an incentive, the level of the UP fees must be set at the 1–2 MS
level. Thus, a combined total of 19 out of 25 interviewees stated
that the renewal fees must be set at the 3 MS level or below – the
overwhelming majority. By contrast, only 6 out of 25 interviewees
stated that a fee of more than 3 MS would still provide them with
an incentive to use the UP. Of these remaining 6 participants, 3
were in the legal community and 3 were working in-house (1 in
ENG, 1 in ICT and 1 in Chemicals). The 1 interviewee out of 26
who did not give a specific level simply stated that he hoped the
fees would be ‘as low as possible’.
A total of 14 out of 24 interviewees10 who responded to a
sub-question on ‘patent pruning’ acknowledged that selective prun-
ing is an important factor in their discussions concerning use of the
UP. The 14 included 8 in-house counsel (3 ENG, 3 ICT, 2 Pharma)
and 6 lawyers.

Question 4 – Court Fees

(a) How important are court fee levels to your firm and your
clients? For instance, if the initial court fee for filing an
infringement claim were set at the equivalent to filing a case
in four or five of the Signatory States, would this encourage
your clients to use the system? Would you consider this
correct, too low or too high?
(b) The UPC fees will be made up of both fixed fees and, after a
certain threshold, a value-based fee. What do you see as the
pros and cons of this sort of system?

10
This sub-question on pruning was not included in the first two pilot
interviews; in fact, it was suggested by one of those first two interviewees. The
sub-question on pruning was added to the two final pilot interviews as well as
to the final questions of the study. Thus, only 24 out of 26 gave a response to
this sub-question.

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186 European patent litigation in the shadow of the UPC

The purpose of Question 4 was to discover from the stakeholder

perspective what level the court fees should ideally be set at, and to
discover what the views of the value-based system are.11 All
interviewees responded to this question. The highest proportion – 8
out of 26 interviewees – stated that they would like to see the UPC
fees set at a level lower than the current fees of the German system.
The 8 consisted of 6 lawyers and 2 in-house counsel – 1 ICT and 1
Pharma. A further 3 out of 26 – 2 lawyers and 1 in-house Pharma
counsel – said that they hoped the UPC fees would be set at a 1–2
MS level. Meanwhile, 2 more interviewees – 1 ENG and 1 ICT
in-house counsel – stated that fees at the 3–4 MS level would be
acceptable. The remaining 13 interviewees – half the sample –
either did not give a specific fee, and only gave general comments,
or did not consider the UPC fees issue to be of importance.
Meanwhile, a total of 8 interviewees – 2 lawyers as well as 6
in-house counsel (2 ENG, 2 ICT, 1 Pharma, and 1 SME Pharma) –
stated that they have a negative view of the value-based element of
the mixed UPC fees system. Meanwhile, 7 interviewees said that
they have a positive view of the proposed value-based system – 5
lawyers and 2 in-house counsel (1 Pharma and 1 Chemicals). The
remaining 11 interviewees had nothing specific to say about the
value-based system.

Question 5 – Business Sector Issues

(a) Is there a particular sector of business, e.g. Pharma, ICT,

ENG, that you think will benefit more than other sectors from
the UP/UPC? Why do you think this?
(b) In particular, do you see any benefits or costs for the
pharmaceutical sector in having:
(i) a unitary patent with 25 MS-wide protection?
(ii) a specialized divisional court for pharmaceuticals/
chemicals located in London?

The aim of Question 5 was to establish whether any particular

sector would benefit more than others from the new system – and,
in particular, with respect to the Pharma sector, to discover what the

11
Question 4 corresponds to Questions 15–19 in the pilot list of questions.

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Annex: interview questions 187

benefit to the sector would be from the UP or the London-based

UPC Central Division;12 25 out of 26 interviewees were able to
provide a response to this question.13 A total of 21 out of these 25
interviewees stated that they expect the Pharma sector to benefit the
most from the new UP/UPC system – 12 in-house counsel (5 ICT,
2 Pharma, 3 ENG, 1 Chemicals and 1 Pharma SME) and 9 lawyers.
18 interviewees out of 25 – 9 in-house counsel and 9 lawyers –
stated that the location of the Pharma/Chemicals division in London
is a good thing, both for the Pharma/Chemicals sector and for
London’s legal community.

Question 6 – EPO Opposition/UPC Revocation interplay

Does the current issue of the opposition delays/backlog at the EPO

concern you or your clients? Could the fact that the UPC does not
have to stay proceedings pending EPO opposition help to amelior-
ate this problem by effectively moving oppositions away from the
EPO?

Question 6 sought to discover (i) the significance of the current

EPO oppositions’ backlog and (ii) the potential for UPC revocation
actions to help alleviate this backlog; 24 out of 26 interviewees
answered this question.14
A total of 19 out of 24 interviewees stated that the current EPO
backlog is a significant problem in their opinion. Of the 19, 8 were
in-house counsel (3 ENG, 2 ICT, 2 Pharma and 1 Chemicals) and
11 were lawyers. Meanwhile, 5 out of 24 interviewees stated that
the current backlog is not a significant problem – all 5 were
in-house counsel (3 ICT, 1 Pharma, 1 Pharma SME); 13 of the 19
who stated that it is a problem said that the availability of UPC
revocations is likely to alleviate the backlog. Of the 13, 5 were
in-house counsel (2 ENG, 1 ICT and 2 Pharma) and 8 were

12
Question 5 corresponds to questions 20–22 in the pilot survey.
13
This question was not posed during the truncated interview with the
representative of the ICT SME.
14
Two participants did not answer this question. The reason for this is that
this question was not in the initial first pilot interview – it was suggested
afterwards by the second pilot interviewee, who gave an answer to it.
Furthermore, this question was not asked during the truncated interview.

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188 European patent litigation in the shadow of the UPC

lawyers; 6 out of 19 argued that the existence of UPC revocations is

unlikely to alleviate the backlog – 3 in-house counsel (1 ENG, 1
ICT and 1 Chemicals) and 3 lawyers.

Question 7 – Sources of Info

What are your major sources of info about the UP/UPC?

This question was suggested by the IPO about one third of the way
through the interview process. As a result, the first 8 interviews did
not feature this question; 18 out of 26 interviewees therefore
answered this question. Most interviewees acknowledged that they
take advantage of a mixture of formal and informal sources in their
preparations. The formal sources are the primary UPC and IPO
documents mentioned above. Informal sources, on the other hand,
include conversations with peers, as well as blogs such as those
found on the IP Kat,15 and discussions at representative organ-
izations. Several of the interviewees had either made representa-
tions to the UPC preparatory committee or were themselves on the
committee. The interviewees were, in general, very well informed.

Question 8 – Any Other Issues

Is there anything else you think is of significance to the current

UP/UPC debate?

All interviewees provided a response to this question.16 However,

most interviewees did not have anything else to add to their
responses – they felt the survey had dealt with all the important
issues. A number of ‘other issues’ were suggested by interviewees.
These were as follows:

+ An in-house counsel at an ICT company raised the issue of

‘Amicus Curiae briefs’, noting that her company would like to
see ‘Amicus briefs’ accepted within the UPC system.

15
http://ipkitten.blogspot.co.uk/
16
This question corresponds to the final question of the original pilot
interview questions.

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Annex: interview questions 189

+ An in-house counsel at a large engineering firm stated that she

would like to see the UK refuse to ratify the various agree-
ments until the final details have been hammered out so that
business can make plans to deal with the new system.
+ An in-house counsel at a large diversified firm (with a large
interest in Pharma) stated that there had been a lot of
‘misinformation’ about the court – particularly over supposed
cost savings – and that it would have been better to spend the
energy and resources devoted to the UP/UPC on reforming
the EPO to alleviate the oppositions backlog.
+ The in-house counsel at a large ICT firm stated that there had
to be a ‘lack of economic impact analysis at individual MS
level’. He further noted that ‘Poland is the only country that
did any kind of IA and as a consequence decided to remain
outside the UPC/UPP’.

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190 European patent litigation in the shadow of the UPC

LIST OF ABBREVIATIONS
CFI – Court of First Instance
CJEU – Court of Justice of the European Union
DE – Germany
ENG – Engineering sector
EP – European patent
EPC – European Patent Convention
EPO – European Patent Office
EU – European Union
FR – France
GB – Great Britain
ICT – Information and Communication Technology sector
IPC – International Patent Classification
IPEC – Intellectual Property Enterprise Court
MS – Member state
MVPs – Most valuable patents
NL – The Netherlands
NPE – Non-practising entity
PA – Patent attorney
PAE – Patent-assertion entity
PCC – Patents County Court
Pharma – Pharmaceutical sector
PHC – Patents Court, part of the Chancery Division of the High
Court of England and Wales
SS – Signatory States
SWE – Sweden
UK – United Kingdom of Great Britain and Northern Ireland
UP – European patent with unitary effect
UPC – Unified Patent Court
WIPO – World Intellectual Property Organization

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Index
Agreement on a Unified Patent Court Boards of Appeal, European Patent
(2013) 2, 5–6, 16, 79–80 Office 4, 15
see also Unified Patent Court Bolar Exemption defence,
(UPC) infringement 87, 88
breakdown between UPC Bouvet, Thomas 56
divisions 96 BPatG (German Federal Patent
damages/compensation 95 Court) 33, 34, 35, 37, 38, 39,
governing law for unitary patents 40, 44, 45, 67, 70, 72, 75
and patentees from states not Brussels I Regulation, and UPC
part of 118–19 83–4
intention behind 85 Bulgaria 93
non-infringement claims 97 business and legal communities 8,
‘offering’ for sale/supply of a 122–57
patented product under 86–7 business sector issues 150–55
procedural stages of an action 100 chemical and pharmaceutical
ratification 82, 104, 111–12, 113 industries, litigant companies
structure of UPC 92 in 29
substantive patent law 84, 85 empirical research methodology
appeals to Court of Appeal 122–39
(Luxembourg) see Court of impact of reforms on legal
Appeal of UPC (Luxembourg) community 155–7
applicable law key concerns for users of UPC
France 45–7 139–47
Germany 31–4 key issues for users of new system
the Netherlands 57–8 157
United Kingdom 18–20 location of central divisions 155
Austria 92, 113 opt-out from jurisdiction of UPC
147–50
Belgium 92 SMEs in new system 151–4
bifurcation of proceedings 124 whether stakeholders in various
comparative analysis 67–9 sectors well informed on
concerns for users of UPC 140–41 UPC/UP 155
costs issues 68–9 which sector benefits the most
in Germany 5, 34, 37, 67, 99 from new system 150–51
mandatory, in Germany 99
optional, within the UPC 99–100 case management conference
in UPC 6, 98–100 (CMC) 21

191
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192 European patent litigationn in the shadow of the UPC

CdA (French Court of Appeal) 45, France 50–52

47 Germany 37–9
Chancery Division of High Court the Netherlands 61–3
(HC) of Justice, England and United Kingdom 22–4
Wales 19 judicial outcomes 72–3
chemical and pharmaceutical key challenges to be addressed by
industries, litigant companies UPC 78
in (UK) 29, 73 length of proceedings
Civil Procedure Rules (CPR), UK 19 France 53, 69
Claessen, R. 43 Germany 40, 69
‘clearing the way’ doctrine 23, 57, the Netherlands 63–4
71, 74, 94 oral hearing 69
Community Trade Marks (EU Trade overall proceedings 69–70
Marks) 10–11 United Kingdom 26
comparative analysis 4–5 parallel litigation across EU
applicable law and competent jurisdictions 75–6
courts procedural structure, assessing
France 45–7 France 47–52
Germany 31–4 Germany 34–9
the Netherlands 57–8 the Netherlands 59–63
United Kingdom 18–20 United Kingdom 20–26
bifurcation of proceedings 67–9 relationship between EPO
case volumes 71–2 opposition decisions and
costs awards enforcement
France 53–4 France 52
Germany 40–42 Germany 39
the Netherlands 64–5 the Netherlands 63
United Kingdom 26–8 United Kingdom 24–6
court fees and litigation costs 76–7 settlements 74–5
disclosure and evidence gathering trial hearing
66 France 50
France 48–50 Germany 35–7
Germany 35 the Netherlands 60–61
the Netherlands 59–60 United Kingdom 22
United Kingdom 21 types of patents litigated in the
empirical research on patent various jurisdictions 73
litigation unique characteristics of
France 54–7 jurisdictions 4–5
Germany 42–5 compensation actions 95–6
the Netherlands 65–6 competition law-related defences,
United Kingdom 28–31 infringement 87
forum shopping 67 costs assessments, UPC/UP 131–8
injunctions 73–4 comparative analysis 76–7
interim injunctions and post-trial opt-out fee 131–2
enforcement UP renewal fee levels 136–8

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Index 193

value-based fees 133–4 defences, infringement 87, 88

whether UPC will help to lower Denmark 92
patent litigation costs in disclosure
Europe 134–6 differences between jurisdictions
costs awards 66
see also costs assessments, France 35, 66
UPC/UP Germany 35
bifurcation of proceedings 68–9 the Netherlands 59–60, 66
and fee shifting see fee shifting United Kingdom 21, 66
France 53–4, 77 DPMA (Patent and Trade Mark
Germany 40–42, 77 Office, Germany) 34–5, 44
the Netherlands 64–5, 77
United Kingdom 26–8, 76, 77 electronic patents, France 73
court competence empirical research on patent
France 45–7 litigation 7–9
Germany 31–4 conduct of interviews (January to
the Netherlands 57–8 March, 2014) 129–31
United Kingdom 18–20 costs assessments, UPC/UP 131–8
of UPC 6, 93–8 data analysis 131–8
court fees and litigation costs, Engineering sector 127
comparative analysis 76–7 France 54–7
Court of Appeal of UPC Germany 42–5
(Luxembourg) 102, 106, 110, Information and Communications
125 Technology (ICT) sector 127,
Court of Justice of the European 166
Union (CJEU) 20, 47, 62 interview questions, developing
relationship with UPC 6, 88–90 123–6
as supra-national court 88 methodology 122–39
Cremers, K. 38, 41, 42–3, 44, 45, the Netherlands 65–6
56–7, 64, 65, 68, 71–2, 74, 75 patent portfolio, pruning 138–9
Croatia 6, 82, 112 Pharma sector 128, 137, 138, 141,
cross-border injunctions 5, 61–2, 74 144, 150–51, 153
Cyprus 93 representative sample, creating
Czech Republic 93 126–9
United Kingdom 28–31
damages 51, 52 UP vs EP 139
data analysis 131–8 enforcement
decision making inconsistency EPO opposition proceedings
15–16, 17 and Dutch enforcement 63
declaration of non-infringement 159 and French enforcement 52
see also infringement and German enforcement 39
comparative analysis 21, 23, 33, and UK enforcement 24–6
48, 57, 59, 71, 74 EU Directive 35, 60, 61, 64
and Unified Patent Court 94, 95, European Patent Convention
97 11–17

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194 European patent litigationn in the shadow of the UPC

post-trial enforcement degree of litigation, comparative

Germany 37–9 analysis 73
United Kingdom 22–4 European Patent with Unitary
UPC powers 6 Effect see Unitary Patent
Engineering sector (ENG) 158, 166, (UP)
167, 175, 183, 184, 186, 187, failure of EU to agree on a
188 uniform, harmonized
empirical research on patent Community Patent system
litigation 127, 137, 144, 146, 10–11
150, 151, 154, 155 France, procedural structure 47,
enhanced cooperation, EU 52, 55
Regulations implementing 5–6 ‘offering’ for sale/supply of a
EPC see European Patent patented product under UPC
Convention (EPC) Agreement 86–7
EPO see European Patent Office opt-out of from jurisdiction of
(EPO) UPC 103–5
EPs see European Patents (EPs) private costs 123
European Patent Bulletin 114 replacement part, and ‘making’ 86
European Patent Convention (EPC) system 1–9
3, 10–17 with unitary effect 111–19
European Patents, application and and Unitary Patent 80, 139
enforcement 11–17 United Kingdom, procedural
parties to 57 structure 24, 25, 31
signatories to 112 evidence gathering
substantive patent law modelled differences between jurisdictions
on 86
66
terms 11
France 48–50, 66
text 11
European Patent Office (EPO) Germany 35, 66
bifurcation of proceedings 67 the Netherlands 59–60, 66
Boards of Appeal 4, 15 United Kingdom 21
bundle of patents for same exhaustion defence, infringement 87
invention 12–13
Economic and Scientific Advisory fee shifting
Board report 116–17 France 53–4
infringement 13–14 United Kingdom 27–8
national applications 12 United States 27
opposition proceedings 4, 15, fees 161
24–6, 25, 39, 52, 63 see also costs assessments, UPC/
patent application 12 UP; costs awards
validation of European Patents 3 comparative analysis 76–7
European Patents (EPs) fee shifting see fee shifting
application and enforcement ‘fixed’ fee models 76, 77
11–17 renewal, Unitary Patent 116–17,
compared to Trade Marks 10–11 136–8, 166–8

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Index 195

value-based 40, 53, 76, 77, 124, Tribunal (TGI) 47, 48, 50, 52, 53,
133–4, 159–60 55, 56, 67
filing an action, in UPC 6, 98–100 and Unified Patent Court 113
Finland 92 United Kingdom compared 50,
forum shopping 67, 72 53, 54
and Unified Patent Court 7, 8, 107, FRAND (fair and reasonable) cases
142–4 94, 118
France
applicable law and competent Germany
courts 45–7 appeals against LG infringement
Code of Civil Procedure 45 decisions 33–4
costs awards 77 applicable law and competent
and fee shifting 53–4 courts 31–4
Court of Appeal (CdA) 45, 47 BHG (German Federal Court of
data sources 1 Justice) 33, 34
disclosure and evidence gathering bifurcation of proceedings in 5,
48–50, 66 34, 37, 67
empirical research on patent BPatG (German Federal Patent
litigation 54–7 Court) 33, 34, 35, 37, 38, 39,
forum shopping 67 40, 44, 45, 67, 70, 72, 75
Germany compared 40, 50, 51, 53, Code for Civil Procedures 31
54 Code for Court Costs 32
infringement in 73 costs awards 40–42, 76, 77
Intellectual Property Code 45 data sources 1
interim injunctions and post-trial disclosure and evidence gathering
enforcement 50–52 35
judicial expertise 66 DPMA (Patent and Trade Mark
Judicial Organisational Code 45 Office) 34–5, 44
length of proceedings 53, 69 empirical research on patent
the Netherlands compared 59–60 litigation 42–5
Paris, primary central division of Federal Constitution 5
UPC located in 82, 91, 98 forum shopping 67, 72
patent litigation venue (Paris) 4 France compared 40, 50, 51, 53,
patent-friendly jurisdiction, 54
viewed as 73 infringement in 33, 33–4, 87
procedural structure 47–52 injunctions 73–4
relationship between EPO interim injunctions and post-trial
opposition decisions and enforcement 37–9
enforcement 52 judicial expertise 66
saisie procedures 5, 48, 49, 52, 59, judicial outcomes 72–3
66, 74 Law on International Patent
settlements 75 Treaties 31
Supreme Court (CC), Commercial length of proceedings 40, 69
Chamber 47 LG courts 33, 34, 35, 36, 37, 39,
trial hearing 50, 69 42, 44, 68, 71–2, 73

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machinery and engineering Helmers, C. 28, 30, 31, 72

industries 73 High Court of Justice of England and
majority of patent litigation Wales, Chancery Division 19
occurring in 123 Hoorneman, W. 65
the Netherlands compared 32, 40 Hungary 93
OLG (higher regional courts) 33,
34, 42 Iceland 112
paper-based system (hearing) 50, Information and Communications
69 Technology (ICT) sector 158,
Patent Code 31 163, 166, 167
patent litigation venues empirical research on patent
(Dusseldorf, Mannheim and litigation 127, 128, 129, 130,
Munich) 4, 33, 34, 35–6, 42, 131–2, 133, 137, 140, 141,
43, 67, 72 142, 143, 144, 145, 150, 151,
patent-friendly jurisdiction, 153, 155
viewed as 73 infringement 13–14
procedural structure 34–9 see also declaration of
relationship between EPO non-infringement
opposition decisions and defences 87, 88
enforcement in Germany 39 direct 86, 87
Remuneration Code for Lawyers’ in France 73
Costs 32 in Germany 33, 33–4, 87
settlements 74 ‘invalid but infringed’ scenario 67
substantiation, legal matters ‘making’ (directly infringing act)
requiring 36 86
trial hearing 35–7, 50, 69 in the Netherlands 73
and Unified Patent Court 72, 82, restraining 105
91, 113 and Unified Patent Court 84, 85,
United Kingdom compared 32, 87, 92, 98–9, 105
36, 40, 41 in United Kingdom 28, 30, 72, 87
UPC, domination of 72 injunctions
UPC divisions in (Munich) 82 see also interim injunctions
Utility Model Code 32 comparative analysis 73–4
utility models 32 concerns for users of UPC 140–41
validity issues 39 cross-border 5, 61–2, 74
Graham, S. 65 ex parte 51, 61, 62
Greece 93 final 62
Intellectual Property Enterprise
hearing Court (IPEC), UK 18–26, 67,
France 50, 69 165
Germany 35–7, 50, 69 see also Patents Court, UK (PHC)
the Netherlands 50, 60–61, 69 interim injunctions 22–3, 74
paper-based systems 50, 69 Patents County Court (PCC) as
United Kingdom 22, 36, 69 precursor to 20, 25, 28

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Index 197

Intergovernmental Agreement on a national patents, and utility models

Unified Patent Court see 118–19
Agreement on a Unified Patent the Netherlands
Court (2013) accelerated proceedings 63–4
interim injunctions applicable law and competent
France 50–52 courts 57–8
Germany 37–9 Civil Chamber 58
the Netherlands 61–3 Code of Civil Procedure (Rv)
United Kingdom 22–4, 74 57–8
International Patent Classification costs awards 64–5, 77
(IPC), WIPO 91 data sources 1
interview questions, developing disclosure and evidence gathering
123–6 59–60, 66
Ireland 92 empirical research on patent
Italy 6, 92 litigation 65–6
forum shopping 67
judicial expertise, comparative France compared 59–60
analysis 66 Germany compared 32
infringement in 74
Kitchen, Sir David 163 interim injunctions and post-trial
Kühnen, T. 43 enforcement 61–3, 74
judicial expertise 66
Lefouili,Y. 30, 31, 72 length of proceedings 63–4
length of proceedings paper-based system (hearing) 50,
France 53, 69
69
Germany 40, 69
Patent Act 1995 57
the Netherlands 63–4
overall proceedings 69–70 patent litigation venue (The
United Kingdom 26 Hague) 4
LG (German courts) 33, 34, 35, 36, patent-friendly jurisdiction,
37, 39, 42, 43, 44, 68, 73 viewed as 73
case volumes 71–2 procedural structure 59–63
litigation see patent litigation, relationship between EPO
European opposition decisions and
‘loser pays’ system see fee shifting enforcement 63
speed and cost-effectiveness of
machinery and engineering proceedings 5
industries, Germany 73 Supreme Court 58
McDonagh, L. 30, 31, 72 trial hearing 50, 60–61, 69
Mejer, E. 75–6 and Unified Patent Court 92
Moss, G. 28 United Kingdom compared 59
most valuable patents (MVPs) 148, non-infringement, declaration of see
149, 153, 162 declaration of
MVPs see most valuable patents non-infringement
(MVPs)

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198 European patent litigationn in the shadow of the UPC

non-practicing entities (NPEs) see national litigation 3–4, 15

‘patent troll’ litigation parallel litigation 75–6, 83–4
(non-practicing entities) patent troll litigation 7, 8, 142–4
Nordic–Baltic UPC regional in Patents Court, UK see Patents
division 92 Court, UK (PHC)
studies 1–2
OLG (higher regional courts, validity issues 14, 33
Germany) 33, 34, 42 venues see venues, litigation
opposition proceedings (EPO) 4, 15 ‘patent troll’ litigation
delays 25 (non-practicing entities) 7, 8,
and Dutch enforcement 63 142–4, 163–4
and French enforcement 52 and United Kingdom 29–30
and German enforcement 39 Patents County Court (PCC), as
and UK enforcement 24–6 precursor to IPEC 20, 25, 28
opt-out from jurisdiction of UPC see also Intellectual Property
103–5, 147–50 Enterprise Court (IPEC)
adapting to new system 147–9 Patents Court, UK (PHC) 18–31
fee 131–2 see also Intellectual Property
how opted-out patent perceived by Enterprise Court (IPEC)
competitors 149 disclosure and evidence gathering
unfamiliarity 147–9 66
whether EU and non-EU business empirical research 28–9, 30
view new system differently enforcement post-judgment on the
149–50 merits 23–4
oral hearing 40, 41, 50, 98, 100–101,
as expensive litigation venue 26–7
101
forum shopping 67
see also hearing
long 36, 69, 123 interim injunctions 22–3, 74
short 41, 69, 100, 123 revocations 72
UK-style 136, 145, 161 SME involvement 30–31
Pharma sector 128, 137, 138, 141,
parallel litigation 75–6 144, 150–51, 153, 154
prevention 83–4 see also chemical and
patent litigation, European pharmaceutical industries,
see also European Patents (EPs) litigant companies in
chemical and pharmaceutical PHC see Patents Court, UK (PHC)
industries, litigant companies Poland 6, 82, 112
in 29 Portugal 83
costs in Europe 134–6 post-trial enforcement
current state, assessing 1, 3 France 50–52
decision making inconsistency Germany 37–9
15–16, 17 the Netherlands 61–3
empirical research see empirical United Kingdom 22–4
research on patent litigation preliminary relief see interim
multiple arenas 14 injunctions

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Index 199

Preparatory Committee, UPC 84, 85, Slovenia 83, 93

160 small and medium-sized enterprises
procedural structure, assessing (SMEs)
France 47–52 empirical research on patent
Germany 34–9 litigation 126, 128
the Netherlands 59–63 in new system 151–4
United Kingdom 20–26 United Kingdom 20, 30–31
at UPC 164–5
reforms, European patent 2, 79–121 Spain 6, 82, 112
aims and crucial features, SPCs see Supplementary Protection
assessing 3 Certificates (SPCs)
background 6 standing and legal representation
and Croatia 6 (UPC) 6, 90–91
EU patent reform package 79–82 Strategic Advisory Board for
impact on legal community 155–7 Intellectual Property (SABIP),
and Italy 6 UK 28
key issues for users of new system Supplementary Protection
157 Certificates (SPCs) 20, 102–3
major elements 17 opt-out of from jurisdiction of
and Poland 6 UPC 103–5
SMEs in new system 151–4 reforms, analysis 85, 88
and Spain 6 Supreme Court (SC), UK (formerly
underlying rationale for 7 House of Lords) 19–20, 28
validity issues/challenges 80, 81, Switzerland 112
82, 87, 88, 89, 90, 91, 93, 94,
99, 102, 114, 119 Technical Board of Appeals, EPO 15
which sector benefits the most TGI (French Tribunal) 47, 48, 50, 52,
from new system 150–51 53, 55, 56, 67
renewal fees, Unitary Patent 116–17, trade mark law, compared to patent
136–8, 166–8 law 10–11
res judicata doctrine 25 Treaty of Rome (1957) 10
revocations 72, 94, 130, 145–6, 164 trial hearing see hearing
standalone actions 98 Turkey 112
Romania 93
Rules of Procedure, UPC 94, 97–8, Unified Patent Court (UPC)
100, 101–2, 142 Agreement see Agreement on a
Unified Patent Court (2013)
saisie procedures, France 5, 48, 49, aim of establishing 2–3
52, 59, 66, 74 appeals to Court of Appeal
Schliessler, P. 45 (Luxembourg) 102, 106, 110
settlements, comparative analysis bifurcation and injunctions
74–5 140–41
Signatory States (SS), UPC 82, 96, and Brussels I Regulation 83–4
103, 105, 106, 107 cases of ‘exceptional importance’
Slovak Republic 93 106–7

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200 European patent litigationn in the shadow of the UPC

central divisions 82–3, 91–3, mediation and arbitration

109–10, 124, 127, 155, facilities, Portugal and
165–6 Slovenia 83
CJEU, relationship with 6, 88–90 and the Netherlands 92
committees 92 oral procedure 100–101
competence assessment 6, 93–8 overview 82–3
costs see costs assessments, patent troll litigation 142–4,
UPC/UP 163–4
court fee levels 132–3 powers 105
Court of First Instance, comprised Preparatory Committee 83, 85,
of 82, 88, 92, 102, 110 160
and declarations of procedural stages of an action
non-infringement 94, 95, 97 100–102
divisions see central divisions regional divisions 92–3, 96–7, 98,
above; local divisions below; 99
regional divisions below Registry 92, 97, 103
filing an action/bifurcation of return to national patent systems
proceedings 6, 98–100 146–7
forum shopping 7, 8, 107, 142–4 revocations 145–6, 164
and France 113 Rules of Procedure 94, 97–8, 100,
and Germany 72, 82, 91, 113 101–2, 142
governing law for unitary patents Signatory States (SS) 82, 96, 103,
and patentees from states not 105, 106, 107
part of UPC Agreement SMEs at 164–5
118–19 specialist technology divisions,
and infringement 84, 85, 87, 92, London and Munich 82, 91,
98–9, 105 98, 127
institutional architecture 6 standing and legal representation
international jurisdiction 83–4 before 6, 90–91
judicial composition and quality Statute 92
139–41, 158–9 structure 82–3
judiciary 106–9, 139–41 across local, regional and
jurisdiction and transition period central divisions 91–3,
110 96–7, 99
key aspects 119–21 substantive patent law 84–8, 124
key challenges to be addressed by opt-out 104
78 training of judges 108–9
key concerns for users 139–47 types of disputes heard 81
language of proceedings 109–10 and United Kingdom 82, 86, 91,
legal sources 81–2 113
length of proceedings 69, 70 whether speedy UPC revocations
litigation costs 159–62 could help clear EPO
local divisions 92, 96–7, 98, 99, oppositions backlog 145–6,
108 164

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Index 201

whether will help to lower patent Property Enterprise Court

litigation costs in Europe (IPEC), UK
134–6 interim injunctions and post-trial
Unitary Patent (UP) 6–7, 80, 111–19 enforcement 22–4, 74
aim of establishing 2–3 judicial expertise 66
costs see costs assessments, judicial outcomes 72
UPC/UP June 2016 referendum on
Enhanced Cooperation procedure membership 9
112 length of proceedings 26
vs European Patent 139 litigation procedures of courts of
legal profession observations 168 England and Wales 19
legal sources 81–2 the Netherlands compared 59–60
and member states 168 oral hearing 101
prospects for 2017 169–70 patent litigation venue (London) 4
and reforms 2 ‘patent troll’ litigation
renewal fees 116–17, 136–8, (non-practicing entities), lack
166–8 of 29–30
territorial scope, addressing Patents Act 1977, UK 18
112–14 Patents Court (PHC) see Patents
translations 80, 114–16 Court, UK (PHC)
United Kingdom 18–31 procedural structure 20–26
‘anti-patent’ jurisdiction, viewed relationship between EPO
as 72 opposition decisions and
applicable law and competent enforcement in UK 24–6
courts 18–20 settlements 74–5
cases of importance SMEs 29, 30
Unilin Beheer v Berry Floor 25 Supreme Court (SC), UK
Virgin v Zodiac 25–6 (formerly House of Lords)
chemical and pharmaceutical 19–20, 28
industries, litigant companies trial hearing 22, 36, 69
in 29, 73 and Unified Patent Court 82, 86,
Civil Procedure Rules (CPR) 19 91, 113
costs awards 26–8, 76, 77 United States compared 27, 29
data sources 1 United States, United Kingdom
disclosure and evidence gathering compared 27, 29
5, 21, 66 UP see Unitary Patent (UP)
empirical research on patent UPC see Unified Patent Court (UPC)
litigation in 28–31 UPC Agreement see Agreement on a
forum shopping 67 Unified Patent Court (2013)
France compared 50, 53, 54 utility models, and national patents
Germany compared 32, 36, 40, 41 118–19
infringement in 28, 30, 72, 87
Intellectual Property Enterprise validity issues 14, 33
Court (IPEC) see Intellectual Germany 39

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202 European patent litigationn in the shadow of the UPC

validity issues/challenges 4, 5, 12, comparative analysis 40, 41, 53,

14–15, 17, 124, 134 76, 77
comparative analysis 67, 68, 69, van Pottelsberghe, B. 75–6
70, 71, 73, 74 Van Zeebroeck, N. 65
France 46, 47, 48, 51, 52, 55, 56, venues, litigation
57 see also forum shopping
Germany 32, 33, 34, 35, 37, 38, France 4, 73
39, 40, 42, 43, 44, 45, 68 Germany 4, 33, 34, 35–6, 42, 43,
the Netherlands 58, 59, 62, 63 67, 72
reforms, analysis 80, 81, 82, 87, the Netherlands 4
88, 89, 90, 91, 93, 94, 99,
United Kingdom 4
102, 114, 119
Véron, Pierre 54, 55
standalone invalidity challenges
54, 57, 71
United Kingdom 21, 22, 24, 25, World Intellectual Property
28, 29, 30 Organisation (WIPO),
value-based fees 124, 133–4, International Patent
159–60 Classification 91

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