The early skirmishes of UPC practice are giving way to
settled patterns—and the first signs of doctrine are taking
root. In this edition, we step back from inpidual decisions and
orders to chart the procedural waypoints that now shape a UPC case
from the outset. Drawing on the growing body of rulings across
pisions and the Court of Appeal, we highlight the rules and
principles that matter most in the opening moves: how parties frame
their pleadings, secure (or resist) provisional measures, and
navigate case management choices that can tilt the board before
merits are joined.
Efficiency is paramount
The Rules of Procedure (“RoP”) preamble states:
…proceedings shall be conducted in a way which will
normally allow the final oral hearing on the issues of infringement
and validity at first instance to take place within one year whilst
recognising that complex actions may require more time and
procedural steps and simple actions less time and fewer procedural
steps.
The UPC’s animating premise is speed with discipline. The
Preamble to the RoP sets the tempo: first instance infringement and
validity should ordinarily reach a final oral hearing within one
year, with elasticity only for the truly complex or the truly
simple. The Court has taken that mandate seriously. In construing
and applying the RoP, panels have shown little patience for
tactical drift or iterative pleading. Amendments to a party’s
case are the exception, not the rule: unless the proponent can
demonstrate that the change could not, with reasonable diligence,
have been made earlier, and that the other side will not be
unfairly hindered, leave will be refused. The one day hearing norm
for ordinary patent cases underscores the same ethos. Parties
should expect to try their case in a concentrated sitting, not a
rolling sequence of mini hearings.
That procedural intensity is enabled by a front loaded
architecture. The written procedure obliges each side to put its
full case forward early, on short, pre set timetables. In
infringement actions without a revocation counterclaim, and in
standalone revocation actions, the written phase is designed to
close six months from service of the statement of claim. If
infringement meets a validity counterclaim, the schedule stretches
modestly: eight months from service, or nine if claim amendment is
sought. The window for preliminary challenges is similarly tight. A
defendant wishing to contest formal deficiencies must file any
preliminary objection within one month of service, before lodging
its statement of defence. In practice, that means jurisdictional,
language, opt out, service and representation issues must be
identified and briefed immediately, or risk being overtaken by the
merits timetable.
Active case management is the third pillar. Judges are
intervening early to define the issues that actually need deciding,
to sequence them for efficient resolution, and to set (and enforce)
timetables that keep cases moving. Where appropriate, multiple
aspects are dealt with on the same occasion; personal attendance is
dispensed with when unnecessary; and available technology is used
to reduce expenses without sacrificing fairness. Directions are
calibrated to ensure the hearing proceeds swiftly and with focus.
The cumulative effect is a forum that rewards preparation.
Counterclaim and bifurcation
In case of an action for infringement, a counterclaim for
revocation may be brought asserting the patent is invalid (Rule 25
RoP). The seized local pision has a discretion to manage cases
where a counterclaim for revocation is filed. This might include:
(i) proceeding with both the action for infringement and the
counterclaim for revocation; (ii) referring the counterclaim for
revocation and the infringement claim to the central pision; or
(iii) referring the counterclaim for revocation alone to the
central chamber (i.e. bifurcation). While bifurcation is possible,
the UPC has generally sought to avoid it unless there are good
reasons such as efficiency or costs savings.
In assessing how to proceed, pisions have focused on familiar
case management considerations: the technical complexity of the
patent and the need for specialist expertise at first instance; the
maturity of the validity record and whether revocation issues will
predominate; the risk of inconsistent or sequentially misaligned
outcomes; the proportionality of running two tracks versus a
unified hearing; and the impact on interim relief, including
whether a stay would unduly prejudice either side. Where a
counterclaim is plainly substantial and technically central,
keeping infringement and validity together has been the default.
Conversely, referral of the revocation counterclaim to the central
pision tends to be favoured where central pision subject matter
expertise promises real gains in speed or quality, or where
validity can be decided swiftly and dispositively.
Interim procedure
The interim phase is where the UPC turns a dense written record
into a trial ready case. Typically spanning about three months
after the written procedure closes, it is managed by the
judge-rapporteur with a single objective: to define, focus and
timetable the issues that will be tried in a one day hearing.
Expect a pragmatic, problem solving approach. The judge-rapporteur
will convene interim hearings or conferences, probe settlement
(including mediation or arbitration where appropriate), and then
crystallise outcomes in a case management order.
The interim conference is very important. Its purpose is to
identify and narrow the determinative issues, record what facts are
truly in dispute, and lock down the schedule. It is also where the
Court deals with the mechanics that often decide efficiency: the
order of witnesses, the topics on which witnesses will be heard,
the use of interpreters, and the practicalities of technology at
the hearing.
Time limits are short and enforced; failure to comply may
trigger default decisions (see below). The message is clear: the
interim procedure is critical. Parties that use it to refine
issues, organise evidence and preview the arguments they will run
at the oral hearing arrive with momentum whereas parties that treat
it as a general guide may find themselves in serious
difficulties.
See for example TCL Europe v Corning.
Standing to bring a claim
At the UPC, standing is not a box ticking exercise; it is a
threshold inquiry that can decide whether a case gets off the
ground. Rule 13 of the RoP sets the tone by requiring a complete
statement of claim, including patent particulars, the parties,
relief sought, and the supporting grounds. The Registry will
examine for compliance, record the complaint in the register once
the infringement fee has been proven paid, and notify the parties
with the file number and date of receipt.
Where the claimant is not the sole proprietor, the entitlement
requirement in Rule 13.1(f) RoP applies. The statement of claim
must include evidence showing the claimant’s right to sue. The
Court expects clarity on who holds which rights and on what legal
basis. Chains of title should be clear; if rights have moved
between group companies or through mergers, the paper trail should
be ready to withstand scrutiny. Article 47 of the UPCA frames the
standing of licensees. An exclusive licensee may bring proceedings
unless the licence provides otherwise, but must notify the
proprietor. Non exclusive licensees may only sue with the
proprietor’s consent, unless the licence expressly grants that
right.
Standing to bring a revocation action
Article 47(6) UPCA casts a deliberately wide net: any natural or
legal person “concerned by a patent” may bring a
revocation action. Recent case law confirms that
“concerned” is a practical, business facing test rather
than a formal one. In Pari Pharma v Philips BV (Milan Central
pision), the Court held that a claimant is “concerned” if
it is potentially seeking to ascertain its freedom to operate or is
potentially operating in the technical field of the patent. A
warning letter or explicit threat is not required in advance; the
question is whether the patent presents a real world constraint or
risk to the claimant’s activities or plans. Conversely, the
provision is not a charter for straw men: actions brought by mere
proxies without their own stake are excluded.
Language of proceedings
Language is now a strategic lever at the UPC, not a mere
formality. Article 49 UPCA anchors the default position:
proceedings are conducted in an official language of the
contracting member state’s pision or another language
designated by that state. In practice, every pision permits
English, and the case law confirms that parties can generally pivot
to English where fairness points that way.
The change of language mechanism under Article 49(5) UPCA is
flexible and rooted in fairness. A defendant seeking to switch to
the language of the patent must persuade the President of the Court
of First Instance that, on the specific facts, the balance of
fairness supports the change. The UPC has emphasised that this
assessment turns primarily on the circumstances of actual parties,
with particular sensitivity to the position of the defendant. Where
a change is ordered, it can be conditioned on translation or
interpretation arrangements so that neither side gains an unfair
procedural edge.
Recent decisions sharpen the contours of the test. In Innovative Sonic v OnePlus Technology and
others, the defendant succeeded in moving from German to
English; the Court of Appeal endorsed that the touchstone is
fairness and requires assessment of the circumstances specific to
the case, with an emphasis on the defendant’s position. In
Renault v Avago, the Court again granted
a switch to English and distilled the relevant factors: the
parties’ positions (including nationality, domicile, and
relative size), the language most commonly used in the relevant
technology and markets, the degree of burden a change would impose
on either side, and whether the language of the patent will promote
efficient, accurate adjudication. The thread through these rulings
is pragmatic proportionality: the Court aims to minimise linguistic
friction without disadvantaging a party or inflating costs.
Default proceedings at the UPC: two routes, two mindsets
Default at the UPC under Rule 355 RoP is not a single procedure
but two distinct mechanisms serving different purposes.
Understanding the pide between Rule 355.1 and Rule 355.2 is
essential to choosing the right strategy.
Rule 355.1: procedural discipline without a merits review
Rule 355.1 addresses non-compliance with procedural obligations.
It applies to any party who fails to take a required step within
the time limits laid down by the RoP or by the Court, or who fails
to appear at an oral hearing after being summoned. The key feature
is that the Court may issue an order on the basis of the default
alone, without examining the underlying merits.
The Court of Appeal’s decision in Microsoft v Suinno is a clear
illustration. The claimant failed to provide security for costs by
the deadline. The default was formal, not substantive: the failure
to comply with the procedural order triggered the consequence, and
the Court did not need to evaluate the claim’s prospects. The
message is clear: when the Court sets a deadline, non-compliance
can and will ground a dispositive order under Rule 355.1.
Rule 355.2: merits by default
Rule 355.2 is different in nature and consequence. It applies
only against defendants (to claims or counterclaims) who do not
respond in the proceeding. Crucially, a “decision by
default” is not automatic and the claimant must put forward
facts that justify the remedy sought, and the Court must satisfy
itself on the merits. The failure of a defendant to respond reduces
the adversarial contest, but it does not lower the claimant’s
legal thresholds for relief.
BMW v ITCiCo Spain demonstrates how far
Rule 355.2 can reach when the record is sufficiently developed. BMW
sought revocation of a patent concerning detection of vehicle
speed. Despite the defendant’s silence, the Court undertook
claim construction, reviewed the pleaded prior art, and concluded
that the patent lacked novelty and inventive step. The absence of a
defence did not trivialise the analysis; it simply meant the Court
proceeded only on the claimant’s evidence and submissions.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.