UPC representation from France

Engaged from the first months of the UPC’s activity, the firm has built a regular practice before this court, for claimants and defendants alike. That experience amounts to some ten engagements and assignments connected with the UPC, combining representation, preparation of the defence and strategic analysis.

Hands-on experience of the first proceedings

• Medical devices. Filing, with a European team, of an infringement action before the Paris local division in November 2023 for a manufacturer of infusion devices. The matter illustrates how technical analysis, evidence and settlement strategy fit together.
• Chemistry. Preparation of the defence of an industrial player exposed to applications for provisional measures or evidentiary measures before the Court, ahead of any action.

These engagements cover medical devices, chemistry and life sciences, in an environment where procedural strategy and command of the technology are built together.

The firm’s lawyers are registered as representatives before the Unified Patent Court (UPC). The firm works in coordination with patent attorneys and, where needed, with European litigation teams.

A single decision takes effect across all participating Member States: the injunction as much as the revocation. That centralisation reduces the cost and duration of litigation that previously had to be fought front by front. It increases exposure in equal measure, since a patent revoked is revoked everywhere at once. The calculation is therefore not the same for a patentee who attacks and for a patentee who defends its portfolio.

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 simple: the case is won or lost in the first weeks. The decisive prior art, the technical expertise and the validity strategy must be settled before the statement of claim when acting for the claimant, and within days of service when acting for the defendant.

France hosts a local division in Paris and the 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 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.

The Lab’s data confirm the advantage of Paris as a venue. The Paris local division is the fastest in the Court to decide an infringement action on the merits: 13.8 months at the median, against 16.8 months across all local divisions. Its evidence seizure orders hold: those the defendant had reviewed were all upheld unchanged, and the Court of Appeal dismissed the appeals brought in the Tiru case. For stand-alone invalidity actions, the Paris seat of the central division is the Court’s leading forum. See the UPC statistics.

Article 83 of the Agreement allows a classic European patent to be withdrawn from the Court’s jurisdiction during the transitional period. Withdrawal is decided portfolio by portfolio, far from any defensive reflex, 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 unified action, whose articulation often determines the economic outcome of the dispute. See also our glossary: opt-out.

During the transitional period, the proprietor of a classic European patent may remove it from the Court’s jurisdiction. That choice, reversible under conditions, is made in the light of the portfolio, the markets covered, the value of the patent and the risk of a revocation action. There is nothing automatic about it, and it is reviewed over time.

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