The judgments before the UPC: the procedure

The Unified Patent Court or UPC is a new court common to the EU Member States that have signed and ratified its founding agreement. For an overview of the available remedies, enforcement, languages, applicable law and timing of the proceedings, see our post here.

A.    FIRST INSTANCE PROCEEDINGS

The procedure is partially different depending on the type of action, but basically all the procedures are modeled on the one envisaged for the infringement action. This includes:

a.     a written procedure

b.     an interim procedure

c.     an oral procedure

d.     a possible procedure for compensation for damages

e.     a procedure for the liquidation of expenses

a)     Written procedure

It consists of an exchange of briefs between the parties without the intervention of the judge. The following are exchanged:

i)      plaintiff’s Statement of Claims (SoC), with which the action is commenced;

ii)     defendant’s Statement of Defense (SoD), to be filed within 3 months, possibly including a counterclaim for revocation;

iii)    plaintiff’s Reply to the SoD, to be filed within 2 months, possibly including a patent limitation application;

iv)    defendant’s Rejoinder to the Reply to the SoD, to be filed within 1 or 2 months (2 if there has been a counterclaim for revocation, to reply to the plaintiff's defenses and possible application for a limitation of the patent);

v)     if there has been a counterclaim of revocation, a further deadline of 1 month for the plaintiff for a final reply to the latest defenses put forward on the matter by the defendant;

vi)    finally, the parties can ask the judge-rapporteur to authorise them to exchange further written defenses.

In this phase, the judge intervenes only if he/she needs to decide on a preliminary objection, to be formulated within 1 month of service of the SoC, to dispute the jurisdiction, competence or language of the proceedings. The judge may in any case reserve the right to decide on the objection at the outcome of the proceedings on the merits.

After the exchange of the written defenses:

i. the judge-rapporteur indicates the closing date of the written procedure, confirms the date on which the interlocutory hearing will be held or informs the parties that it will not be held; and

ii. in the event of a counterclaim of revocation, the panel of judges decides whether to withhold the entire case, refer it to the Central Division or only refer the counterclaim (staying or continuing the infringement proceedings). If it withholds the counterclaim, it requests the appointment of a technical judge.

As mentioned above, the other actions are modeled on that for infringement, as follows.

The action for the revocation will include:

a.     plaintiff’s Statement for patent revocation

b.     defendant’s Defense to Revocation (DtR), to be filed within 2 months, possibly including a request for a  limitation of the patent and a counterclaim for infringement;

c.     plaintiff’s Reply to DtR, to be filed within 2 months

d.     defendant’s Rejoinder to the Reply, to be filed within 1 month.

The action for non-infringement will include:

a.     plaintiff’s Statement for a declaration of non- infringement (SDNI)

b.     defendant’s Defense to SDNI, to be filed within 2 months

c.     plaintiff’s Reply to Defense, to be filed within 1 month

d.     defendant's Rejoinder to the Reply, to be filed within 1 month

b)    Interim procedure

The judge-rapporteur prepares the oral procedure, amongst others by:

a.     scheduling the hearing

b.     indicating the more relevant topics to discuss

c.     asking the parties to provide clarifications or evidence

d.     inviting the parties to settle through the mediation and arbitration center

e.     possibly scheduling an interim conference

The interim procedure is to be completed within 3 months of the end of the written procedure.

c)     Oral procedure

It consists of a hearing, to be held immediately after the end of the interim procedure, as follows:

a.     the panel of judges hears the parties, witnesses and technical consultants

b.     the parties can ask witnesses and consultants questions, under the control of the president of the panel

c.     the hearing should last no longer than one day; in exceptional cases a further hearing may be set

A decision on the merits is then issued, theoretically within 6 weeks. In addition to the remedies indicated in this other post, it:

·       contains a decision in principle on the obligation to pay legal costs

·       may contain an interim award of costs

·       in the case of a separate procedure for the award of damages, it may contain an interim order to pay damages, covering at least the costs for that further damage procedure

d)    Procedure for the determination of damages

A separate procedure might be commenced if damages have not already been determined in the infringement decision. It includes:

a.     the plaintiff’s Application to be filed within 1 year of the decision on the merits

b.     the defendant’s Defense to be filed within 2 months

c.     the plaintiffs’ Reply to be filed within 1 month

d.     the defendant’s Rejoinder to be filed within 1 month

e.     possible further exchanges of defenses upon order of the judge-rapporteur

f.      an Interim procedure and an Oral procedure as above

g.     a possible sub-procedure for the submission of the defendant’s accounting records, if the application contains a request to that effect ("request to lay open books") and the counterparty does not comply with the request.

e)     Procedure for a decision on costs

The request shall be filed within 1 month of the decision on the merits or on damages.

Costs include taxes, lawyers’ and consultants’ fees, costs of translators and interpreters, up to a fixed maximum amount;

Notably, in the main proceedings it is also possible to ask for a deposit for the payment of legal costs.

B.    APPEAL PROCEEDINGS

Almost all UPC orders can be challenged before the Court Of Appeal. However, a preliminary appeal as provided in the Italian system is not available before the UPC.

Deadlines for the appeal:

a.     against first instance decisions: 2 months from notification for the Statement of Appeal; another 2 months to substantiate it by filing the "Statement of Grounds of appeal";

b.     against precautionary orders: 15 days from notification. In this case there is no later term for any additional Statement of Grounds of appeal.

For some kind of orders, the Anglo-Saxon system of "leave / permission to appeal" is utilised: the court of first instance must allow the appeal, but, if it does not allow it, a review can be requested from the Court Of Appeal, which carries out a discretionary review and decides without giving reasons for its decision.

C.    PROCEEDINGS FOR PROVISIONAL MEASURES

The application can be filed during the course of full-scale merits proceedings or before this has started, and can request that the measures are granted ex parte.

a.     The Court, at its discretion:

i)               informs the defendant and grants it a deadline to file an Objection to Application; or

ii)              summons the parties to a hearing; or

iii)             summons only the applicant to a hearing.

b.     The Court issues the decision as soon as possible after the hearing.

c.     The provisional measures lapse if full-scale proceedings on the merits are not initiated within 20 working days or 31 calendar days, whichever is the longer term (no "stable" preliminary injunction is envisaged, in contrast with the Italian procedure).

d.     The respondent may request a revision ("Review") of the measure within 30 days of the execution; in this case the Court fixes a hearing for discussion " without delay";

e.     Either side can appeal.

[Last updated: July 2023]