UPC representation from France

Since 1 June 2023, a single decision can enjoin a product across all participating Member States, or revoke a patent for all those territories at once. Dhenne Avocats appears before the Unified Patent Court and before the Paris Judicial Court, and runs the coordination between the two.

Representation before the Unified Patent Court is governed by Article 48 of the Agreement. Matthieu Dhenne is entered on the list of representatives kept by the Court and acts in that capacity before the local divisions, the central division and the Court of Appeal.

The firm works with the client's patent attorney, or with one of those it regularly instructs. That configuration suits the unitary system, where the technical case and the procedural case are built together from the very first pleading.

A single decision takes effect across all the participating states, both the injunction and the revocation. That centralisation cuts the cost and the length of litigation that previously had to be run front by front. It raises the exposure by the same token, since a patent revoked is revoked everywhere at once. The calculation is therefore not the same for a proprietor bringing a claim and for a proprietor defending one.

The written procedure before the Unified Patent Court runs on short, mandatory time limits. The defendant has three months for its statement of defence, the counterclaim for revocation is filed within the same period, and extensions are rare.

The practical consequence is straightforward: the case is won or lost in the first few weeks. The decisive prior art, the technical expertise and the revocation strategy must be settled before the statement of claim if you are the claimant, and within days of service if you are the defendant.

France hosts a local division in Paris as well as a seat of the central division. An action may be brought there according to the place of infringement or the defendant's domicile. The choice between local and central division, like the choice between the Unified Patent Court and the Paris Judicial Court, is made case by case: language of proceedings, composition of the panel, duration, territorial reach of the decision and exposure to a counterclaim.

Article 83 of the Agreement allows a classic European patent to be withdrawn from the Court's jurisdiction during the transitional period. That withdrawal is not a defensive reflex: it is decided portfolio by portfolio, according to the strength of the patent, the markets covered and the risk of a centralised revocation action.

We conduct that assessment, together with the coordination of parallel proceedings: opposition before the European Patent Office, national actions and the unitary action, whose interplay often determines the economic outcome of the dispute. See also our glossary: opt-out.

During the transitional period, the proprietor of a classical European patent may withdraw it from the Court's jurisdiction. That choice, reversible under conditions, is made in light of the portfolio, the markets covered, the value of the patent and the risk of a revocation action. It is not automatic, and it should be revisited.

The Court has its own evidentiary arsenal: evidence preservation orders and inspections of premises based on Article 60 of the Agreement, orders to produce documents, and provisional injunctions. These measures are now granted by several divisions and the practice is settling.

We seek them and we resist them, and we arbitrate between the unitary route and the French saisie-contrefaçon , whose evidentiary regime remains distinct. See our page on evidence before the UPC.

• Infringement actions and counterclaims for revocation before the local divisions and the central division.
• Standalone revocation actions, for claimants and defendants alike.
• Evidence preservation measures and provisional measures.
• Disputes concerning standard essential patents and FRAND undertakings.
• Life sciences litigation: pharmaceuticals, biotechnology and medical devices.
• Coordination with national proceedings and with opposition before the European Patent Office.

Contact us.

Pour les cabinets et directions juridiques étrangers, le cabinet intervient comme correspondent in France for patents and the UPC. Il propose aussi une second opinion en contentieux de brevets européen et un programme de litigation readiness for patent disputes.

Le lexique du cabinet détaille la procédure devant la juridiction unifiée du brevet : division locale et division centrale, language of proceedings, written procedure, procédure orale et audience, ordonnance de conservation des preuves, court costs, security for costs and cour d’appel de la JUB.