The Importance of Timing in UPC Actions

Background

On June 1, 2023, when the UPC came into operation, Sanofi filed a revocation action against Amgen before the Munich Central Division. Simultaneously, Amgen filed an infringement action against Sanofi and Regeneron before the Munich Local Division. However, technical issues with the Court Management System (CMS) led to both parties submitting their actions in hard-copy format. Sanofi filed the revocation action in Luxembourg, while Amgen filed the infringement action at the Munich Local Division.

Amgen's Preliminary Objection

In response, on 20 July 2023Amgen filed a preliminary objection of inadmissibility of the revocation action filed by Sanofi under Article 33(4) UPCA. In particular Amgen argued to have filed the infringement action first as it emerged from the information available on the CMS showing that the “date of lodging” for their infringement action preceded that of Sanofi's revocation action. Additionally, Amgen contended that Sanofi had filed their action in the wrong location, choosing the Registry of Luxembourg instead of the sub-registry of the competent Munich Central Division.

The Judge’s decision

The central issue revolved around Article 33(4) UPCA, which stipulates that a revocation action should be brought before the central division unless an infringement action between the same parties, involving the same patent, is filed before a local or regional division. In such cases, the revocation action may only be brought before the same local or regional division.

The UPC Judge emphasized that the UPC's primary objectives are to enhance legal certainty, expedite proceedings, and deliver high-quality decisions. To fulfil these objectives, the UPC rules governing internal competence, including Article 33(4) of the UPCA, must be clear, predictable, and based on objective criteria.

The Judge ruled that the decisive factor in determining which action was filed first in time is the exact date and time of lodging the statements of claim and the statement of revocation. The Judge dismissed the relevance of the time the actions appeared on the CMS or the parties' subjective knowledge, focusing solely on the timing of filing.

Furthermore, the Judge rejected Amgen's argument regarding the location of filing, which was based on the allegation that Sanofi did not file the action in hard-copy in the right place, having filed it at the Registry of Luxembourg instead of the sub-registry of the competent Munich Central Division.

The Judge referred to Rule 4.2 RoP, allowing parties to choose between filing at "the Registry" or "a sub-registry" when the electronic case management system is non-functional. According to the Judge, this interpretation of the two alternatives available for the parties is also in line with the different previous version of Rule 4.2 (17th draft) and with the notion of the UPC as “one Court” with “one Register”.

The Judge also deemed irrelevant the reference of Amgen to Rule 3(2) of the Registry Rules providing that paper documents and physical evidence may be submitted in person during opening hours of the competent division of the Court of First Instance or of the Court of Appeal. Indeed, in the Judge’s opinion, this rule does not provide where a party has to lodge hard-copy documents when the CMS has ceased to function in the initial lodging of a case with the court but simply the possibility to file documents during certain opening hours in “normal” situation in which a competent division has been established. Furthermore, in any case the Registry Rules are not intended to and cannot overrule the RoP.

Based on the above, noting that Sanofi's statement for revocation was lodged in hard copy at the Registry in Luxembourg on June 1, 2023 at 11.26 a.m. while Amgen’s statement of claim in the infringement action was lodged in hard-copy at the sub-registry at the Munich LD on June 1, 2023 at 11.45 a.m., so about half an hour later, the Judge rejected the preliminary objection of inadmissibility of Sanofi’s revocation action.

Conclusion

The decision of the Munich UPC Central Division in the Amgen-Sanofi case underscores the importance of promptly filing actions. Indeed, every minute can have a significant impact on the potential bifurcation of infringement and revocation actions, ultimately influencing the entire litigation strategy.