27 November 2023

The Unified Patent Court presents challenges for English patent litigators

A piece by Partner Nicholas Fox and Technical Assistants Daniel Johnston and Grace Heredge Thomas has been featured in The Law Society Gazette, giving an insight into the challenges that the Unified Patent Court (UPC) presents to English patent litigators.

An extended version of the press release is available below.

The UPC is a new court which has been established to provide a forum for hearing disputes over unitary patents which provide patent protection extending over 17 EU member states. In addition, the UPC has jurisdiction to enforce and revoke patents granted by the European patent office in force in those member states. Prior to the establishment of the UPC, enforcement of such patents could only take place on a country-by country basis and one of the main rationales for the new court was to remove duplication of enforcement proceedings.

In the first few months of its existence, filing figures at the UPC have been robust with over 100 already having been filed at the court. In contrast, the volume of patent litigation in the English courts has been falling in recent years, whereas 85 cases were filed with the English Patents Court in 2017, that number fell to only 35 last year with a similar number of cases expected to be filed this year.

This puts English patent solicitors in a quandary. The English Patents court was a forum of choice for settling high profile international patent disputes, with the highly competent patent judges and rigorous testing of expert evidence through cross-examination making the English courts a preferred venue for challenging the validity of granted patents. The initial signs of success for the UPC indicate that this position is likely to be challenged. The rules of procedure for the UPC were designed by cherry-picking the best aspects of English and European court litigation with a view to making the court as suitable as possible for hearing patent disputes. Through greater emphasis on documentary evidence and a more targeted approach to cross-examination, the costs of litigation in the UPC are expected to be significantly lower than in the English Patents Court. At the same time, the rules do provide for a much stronger role for the presentation and challenge of expert evidence than in the case in main continental court systems.

Further, one of the attractions of the UPC is that it is expected that a significant proportion of the litigation conducted in the new court will be in English. Actions to revoke a patent are required to be brought in the language in which a patent was prosecuted which in around 80% of cases is English. Litigants normally have a choice of languages to use when enforcing a patent in the UPC, but in almost all cases litigating in English will be an option and in a recent case brought in the Dutch division of the UPC, the court acceded to a defendant’s request to change the language of proceedings from Dutch to English on the grounds that would be of assistance to a defendant based in Spain.

Unfortunately, most English patent solicitors will be locked out from this new court system. The UPC only permits lawyers qualified in the EU to litigate before the court and requires such lawyers to hold EU nationality. Following Brexit and the UK’s departure from the EU, only a handful of English lawyers have the right to litigate in the new court, typically through a fortuitous combination of ancestry and cross-qualification as lawyers in Ireland.

The situation of English solicitors is in marked contrast to that of UK patent attorneys. Virtually all UK patent attorneys are qualified to act before the European Patent Office – a patent granting organization based in Munich and the Hague which as it was established under a treaty which was separate from the founding treaties of the European Union has been unaffected by Brexit. Over 970 UK patent attorneys, representing about a third of patent attorneys based in the UK have registered to act before the UPC on the basis rights to conduct litigation acquired pre-Brexit. Unlike lawyers appearing before the court, there are no restrictions that attorneys must have EU nationality.

In the face of dwindling numbers of patent disputes being heard in the English Patents Court, this cadre of patent attorneys presents English patent solicitors with an opportunity. Historically, patent attorneys have only had a supporting role in English patent litigation with almost all English based litigation being overseen by solicitors specialising in patent law. Patent attorneys have, however, long represented clients in opposition proceedings before the European patent office which enable third parties to challenge the grant of patents. Such opposition proceedings are heavily influenced by civil law approaches to litigation in Europe and share many similarities with revocation proceeding before the UPC. The challenge facing English patent litigators will be how to leverage this cadre of patent attorneys qualified to litigate in the UPC in order to capture a share of UPC litigation market.

Daniel Johnston
Technical Assistant
Grace Heredge Thomas
Technical Assistant