Latest UPC Stats - 26 months later

The UPC has been around now for 2 ¼ years - and how is it looking? We at Bird & Bird LLP are in the top 3 law firms representing clients before the UPC, and are involved in 14% of substantive proceedings before the UPC.  So we are well-placed to let you know.  Read on to find out more. 

Infringement actions 

How many? 

As expected, infringement actions have been the vast majority of the workload of the UPC, comprising around 70% of the substantive actions started at the UPC since June 2023. The vast majority of these have been before the German divisions, which account for over 75% of UPC infringement actions.  Around 10 to 15 infringement actions are started per month, but this has peaked at 30. 

What have been the outcomes?

At Bird & Bird, we are involved with around 13% of all UPC infringement actions, representing both claimants and defendants. 

So far, over 380 infringement actions have been started at the UPC.  (It is to be noted that the UPC route has led to many settlements, with just over 50% of all infringement actions resulting in settlement/closure/withdrawal).  Of the remaining actions, just over 50 final decisions have been issued, with just over 50% of these concluding that the patent was valid (either as granted or as amended) and infringed.  

In every one of these cases, a permanent injunction was granted.  It is to be noted that before the UPC, a claimant does not need to justify an injunction, just request one. 

How about the timing?

The UPC is in many cases achieving its ambition to get to an oral hearing within a year of the filing of an action.  But this has not been achieved in every case and the Munich Local Division in particular has a significant backlog, when one considers infringement actions that were filed over 15 months ago. 

There are many Divisions of the UPC, and it may be in a party's interest to make more use of the less busy other Divisions.  

Revocation actions

How many? 

Before the UPC opened its doors in 2023, there was great speculation about whether a central revocation action at the UPC would start to replace opposition proceedings before the EPO. This has not been the case, with only 71 revocation actions having been filed since the outset (around 2-4 per month). Revocation actions account for around 13% of substantive actions started before the UPC.  

The reasons for this apparently low uptake are likely to be twofold: 

1. Opt-out of a patent prevents third parties from filing a revocation action before the UPC
   1. Experience has shown that patent holders have in many cases opted out their important patents from the jurisdiction of the UPC, and then withdrawn this opt out just before they are ready to start infringement proceedings.  
   2. Parties wishing to file a central revocation action are therefore prevented from being proactive before the patent holder starts infringement proceedings. 
       
2. Opposition before the EPO, if successful, affects ALL patents deriving from the European patent at issue (potentially in 39 states).  Whereas a decision by the UPC to revoke a European patent only takes effect in the 18 UPC states.   
   1. The UPC has shown that it is prepared to consider the validity of European patents outside those 18 UPC states, but this is only with inter partes effect.   
   2. Third parties would therefore need to file revocation actions before the national courts to achieve revocation outside the UPC states.   

What have been the outcomes?

Of the 72 revocation actions started, around 25 decisions have issued (excluding cases that have settled/closed/withdrawn before the final decision has been issued).  Of these, around 30% of patents have been considered valid as granted, around 30% have been considered valid as amended and around 40% have resulted in a decision to revoke the patent in the relevant UPC states.  

Bird & Bird has represented parties in around 13% of all UPC revocation actions filed.  

How about the timing? 

Again, the time between the filing of a case and the oral hearing has generally met the 12-14 month ambition of the UPC.  Revocation actions are not suffering a backlog, unsurprising given their low number.

Provisional measures

How many?

Applications for preliminary measures that include requests for preliminary injunctions amount to around 13% of the substantive cases at the UPC. Where the application has been granted, preliminary injunctions have also been granted.  Around 2 to 5 applications have been filed per month since June 2023.   

Bird & Bird has represented parties in around 20% of all UPC applications for provisional measures. 

What have been the outcomes?

Around 40 final orders have been issued – most by German LDs but also Milan LD and The Hague LD. Nearly 60% have resulted in a positive outcome for the applicant, with a provisional injunction granted whenever a positive decision has been issued.  

And the timing? 

On average, a final decision is issued around 4 months (120 days) after an application was filed. Munich LD has been taking the longest (around 6 months); many take around 3 or less (e.g. Milan, Hamburg, The Hague, Düsseldorf).  

Costs

One point of interest coming out now from the UPC is that of costs.  In many cases, on settlement, a significant proportion of the Court Fees are refunded.  This is interesting as the UPC is supposed to be self-financing and refunding court fees once parties settle (many as a result of the UPC proceedings) makes it hard to see how the UPC will achieve this.