{"id":699635,"date":"2026-01-16T10:05:17","date_gmt":"2026-01-16T10:05:17","guid":{"rendered":"https:\/\/www.europesays.com\/uk\/699635\/"},"modified":"2026-01-16T10:05:17","modified_gmt":"2026-01-16T10:05:17","slug":"upchronicle-january-2026-patent","status":"publish","type":"post","link":"https:\/\/www.europesays.com\/uk\/699635\/","title":{"rendered":"UPChronicle – January 2026 – Patent"},"content":{"rendered":"

The early skirmishes of UPC practice are giving way to
\nsettled patterns\u2014and the first signs of doctrine are taking
\nroot. In this edition, we step back from inpidual decisions and
\norders to chart the procedural waypoints that now shape a UPC case
\nfrom the outset. Drawing on the growing body of rulings across
\npisions and the Court of Appeal, we highlight the rules and
\nprinciples that matter most in the opening moves: how parties frame
\ntheir pleadings, secure (or resist) provisional measures, and
\nnavigate case management choices that can tilt the board before
\nmerits are joined.<\/strong><\/p>\n

Efficiency is paramount<\/p>\n

The Rules of Procedure (“RoP”) preamble states:<\/p>\n

…proceedings shall be conducted in a way which will
\nnormally allow the final oral hearing on the issues of infringement
\nand validity at first instance to take place within one year whilst
\nrecognising that complex actions may require more time and
\nprocedural steps and simple actions less time and fewer procedural
\nsteps.<\/p>\n

The UPC’s animating premise is speed with discipline. The
\nPreamble to the RoP sets the tempo: first instance infringement and
\nvalidity should ordinarily reach a final oral hearing within one
\nyear, with elasticity only for the truly complex or the truly
\nsimple. The Court has taken that mandate seriously. In construing
\nand applying the RoP, panels have shown little patience for
\ntactical drift or iterative pleading. Amendments to a party’s
\ncase are the exception, not the rule: unless the proponent can
\ndemonstrate that the change could not, with reasonable diligence,
\nhave been made earlier, and that the other side will not be
\nunfairly hindered, leave will be refused. The one day hearing norm
\nfor ordinary patent cases underscores the same ethos. Parties
\nshould expect to try their case in a concentrated sitting, not a
\nrolling sequence of mini hearings.<\/p>\n

That procedural intensity is enabled by a front loaded
\narchitecture. The written procedure obliges each side to put its
\nfull case forward early, on short, pre set timetables. In
\ninfringement actions without a revocation counterclaim, and in
\nstandalone revocation actions, the written phase is designed to
\nclose six months from service of the statement of claim. If
\ninfringement meets a validity counterclaim, the schedule stretches
\nmodestly: eight months from service, or nine if claim amendment is
\nsought. The window for preliminary challenges is similarly tight. A
\ndefendant wishing to contest formal deficiencies must file any
\npreliminary objection within one month of service, before lodging
\nits statement of defence. In practice, that means jurisdictional,
\nlanguage, opt out, service and representation issues must be
\nidentified and briefed immediately, or risk being overtaken by the
\nmerits timetable.<\/p>\n

Active case management is the third pillar. Judges are
\nintervening early to define the issues that actually need deciding,
\nto sequence them for efficient resolution, and to set (and enforce)
\ntimetables that keep cases moving. Where appropriate, multiple
\naspects are dealt with on the same occasion; personal attendance is
\ndispensed with when unnecessary; and available technology is used
\nto reduce expenses without sacrificing fairness. Directions are
\ncalibrated to ensure the hearing proceeds swiftly and with focus.
\nThe cumulative effect is a forum that rewards preparation.<\/p>\n

Counterclaim and bifurcation<\/p>\n

In case of an action for infringement, a counterclaim for
\nrevocation may be brought asserting the patent is invalid (Rule 25
\nRoP). The seized local pision has a discretion to manage cases
\nwhere a counterclaim for revocation is filed. This might include:
\n(i) proceeding with both the action for infringement and the
\ncounterclaim for revocation; (ii) referring the counterclaim for
\nrevocation and the infringement claim to the central pision; or
\n(iii) referring the counterclaim for revocation alone to the
\ncentral chamber (i.e. bifurcation). While bifurcation is possible,
\nthe UPC has generally sought to avoid it unless there are good
\nreasons such as efficiency or costs savings.<\/p>\n

In assessing how to proceed, pisions have focused on familiar
\ncase management considerations: the technical complexity of the
\npatent and the need for specialist expertise at first instance; the
\nmaturity of the validity record and whether revocation issues will
\npredominate; the risk of inconsistent or sequentially misaligned
\noutcomes; the proportionality of running two tracks versus a
\nunified hearing; and the impact on interim relief, including
\nwhether a stay would unduly prejudice either side. Where a
\ncounterclaim is plainly substantial and technically central,
\nkeeping infringement and validity together has been the default.
\nConversely, referral of the revocation counterclaim to the central
\npision tends to be favoured where central pision subject matter
\nexpertise promises real gains in speed or quality, or where
\nvalidity can be decided swiftly and dispositively.<\/p>\n

Interim procedure<\/p>\n

The interim phase is where the UPC turns a dense written record
\ninto a trial ready case. Typically spanning about three months
\nafter the written procedure closes, it is managed by the
\njudge-rapporteur with a single objective: to define, focus and
\ntimetable the issues that will be tried in a one day hearing.
\nExpect a pragmatic, problem solving approach. The judge-rapporteur
\nwill convene interim hearings or conferences, probe settlement
\n(including mediation or arbitration where appropriate), and then
\ncrystallise outcomes in a case management order.<\/p>\n

The interim conference is very important. Its purpose is to
\nidentify and narrow the determinative issues, record what facts are
\ntruly in dispute, and lock down the schedule. It is also where the
\nCourt deals with the mechanics that often decide efficiency: the
\norder of witnesses, the topics on which witnesses will be heard,
\nthe use of interpreters, and the practicalities of technology at
\nthe hearing.<\/p>\n

Time limits are short and enforced; failure to comply may
\ntrigger default decisions (see below). The message is clear: the
\ninterim procedure is critical. Parties that use it to refine
\nissues, organise evidence and preview the arguments they will run
\nat the oral hearing arrive with momentum whereas parties that treat
\nit as a general guide may find themselves in serious
\ndifficulties.<\/p>\n

See for example TCL Europe v Corning<\/a>.<\/p>\n

Standing to bring a claim<\/p>\n

At the UPC, standing is not a box ticking exercise; it is a
\nthreshold inquiry that can decide whether a case gets off the
\nground. Rule 13 of the RoP sets the tone by requiring a complete
\nstatement of claim, including patent particulars, the parties,
\nrelief sought, and the supporting grounds. The Registry will
\nexamine for compliance, record the complaint in the register once
\nthe infringement fee has been proven paid, and notify the parties
\nwith the file number and date of receipt.<\/p>\n

Where the claimant is not the sole proprietor, the entitlement
\nrequirement in Rule 13.1(f) RoP applies. The statement of claim
\nmust include evidence showing the claimant’s right to sue. The
\nCourt expects clarity on who holds which rights and on what legal
\nbasis. Chains of title should be clear; if rights have moved
\nbetween group companies or through mergers, the paper trail should
\nbe ready to withstand scrutiny. Article 47 of the UPCA frames the
\nstanding of licensees. An exclusive licensee may bring proceedings
\nunless the licence provides otherwise, but must notify the
\nproprietor. Non exclusive licensees may only sue with the
\nproprietor’s consent, unless the licence expressly grants that
\nright.<\/p>\n

Standing to bring a revocation action<\/p>\n

Article 47(6) UPCA casts a deliberately wide net: any natural or
\nlegal person “concerned by a patent” may bring a
\nrevocation action. Recent case law confirms that
\n“concerned” is a practical, business facing test rather
\nthan a formal one. In Pari Pharma v Philips BV<\/a> (Milan Central
\npision), the Court held that a claimant is “concerned” if
\nit is potentially seeking to ascertain its freedom to operate or is
\npotentially operating in the technical field of the patent. A
\nwarning letter or explicit threat is not required in advance; the
\nquestion is whether the patent presents a real world constraint or
\nrisk to the claimant’s activities or plans. Conversely, the
\nprovision is not a charter for straw men: actions brought by mere
\nproxies without their own stake are excluded.<\/p>\n

Language of proceedings<\/p>\n

Language is now a strategic lever at the UPC, not a mere
\nformality. Article 49 UPCA anchors the default position:
\nproceedings are conducted in an official language of the
\ncontracting member state’s pision or another language
\ndesignated by that state. In practice, every pision permits
\nEnglish, and the case law confirms that parties can generally pivot
\nto English where fairness points that way.<\/p>\n

The change of language mechanism under Article 49(5) UPCA is
\nflexible and rooted in fairness. A defendant seeking to switch to
\nthe language of the patent must persuade the President of the Court
\nof First Instance that, on the specific facts, the balance of
\nfairness supports the change. The UPC has emphasised that this
\nassessment turns primarily on the circumstances of actual parties,
\nwith particular sensitivity to the position of the defendant. Where
\na change is ordered, it can be conditioned on translation or
\ninterpretation arrangements so that neither side gains an unfair
\nprocedural edge.<\/p>\n

Recent decisions sharpen the contours of the test. In Innovative Sonic v OnePlus Technology and
\nothers<\/a>, the defendant succeeded in moving from German to
\nEnglish; the Court of Appeal endorsed that the touchstone is
\nfairness and requires assessment of the circumstances specific to
\nthe case, with an emphasis on the defendant’s position. In
\nRenault v Avago<\/a>, the Court again granted
\na switch to English and distilled the relevant factors: the
\nparties’ positions (including nationality, domicile, and
\nrelative size), the language most commonly used in the relevant
\ntechnology and markets, the degree of burden a change would impose
\non either side, and whether the language of the patent will promote
\nefficient, accurate adjudication. The thread through these rulings
\nis pragmatic proportionality: the Court aims to minimise linguistic
\nfriction without disadvantaging a party or inflating costs.<\/p>\n

Default proceedings at the UPC: two routes, two mindsets<\/p>\n

Default at the UPC under Rule 355 RoP is not a single procedure
\nbut two distinct mechanisms serving different purposes.
\nUnderstanding the pide between Rule 355.1 and Rule 355.2 is
\nessential to choosing the right strategy.<\/p>\n

Rule 355.1: procedural discipline without a merits review<\/p>\n

Rule 355.1 addresses non-compliance with procedural obligations.
\nIt applies to any party who fails to take a required step within
\nthe time limits laid down by the RoP or by the Court, or who fails
\nto appear at an oral hearing after being summoned. The key feature
\nis that the Court may issue an order on the basis of the default
\nalone, without examining the underlying merits.<\/p>\n

The Court of Appeal’s decision in Microsoft v Suinno<\/a> is a clear
\nillustration. The claimant failed to provide security for costs by
\nthe deadline. The default was formal, not substantive: the failure
\nto comply with the procedural order triggered the consequence, and
\nthe Court did not need to evaluate the claim’s prospects. The
\nmessage is clear: when the Court sets a deadline, non-compliance
\ncan and will ground a dispositive order under Rule 355.1.<\/p>\n

Rule 355.2: merits by default<\/p>\n

Rule 355.2 is different in nature and consequence. It applies
\nonly against defendants (to claims or counterclaims) who do not
\nrespond in the proceeding. Crucially, a “decision by
\ndefault” is not automatic and the claimant must put forward
\nfacts that justify the remedy sought, and the Court must satisfy
\nitself on the merits. The failure of a defendant to respond reduces
\nthe adversarial contest, but it does not lower the claimant’s
\nlegal thresholds for relief.<\/p>\n

BMW v ITCiCo<\/a> Spain demonstrates how far
\nRule 355.2 can reach when the record is sufficiently developed. BMW
\nsought revocation of a patent concerning detection of vehicle
\nspeed. Despite the defendant’s silence, the Court undertook
\nclaim construction, reviewed the pleaded prior art, and concluded
\nthat the patent lacked novelty and inventive step. The absence of a
\ndefence did not trivialise the analysis; it simply meant the Court
\nproceeded only on the claimant’s evidence and submissions.<\/p>\n

The content of this article is intended to provide a general
\nguide to the subject matter. Specialist advice should be sought
\nabout your specific circumstances.<\/p>\n","protected":false},"excerpt":{"rendered":"The early skirmishes of UPC practice are giving way to settled patterns\u2014and the first signs of doctrine are…\n","protected":false},"author":2,"featured_media":42633,"comment_status":"","ping_status":"","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[3,4],"tags":[748,393,4884,1144,712,16,15,1764],"class_list":{"0":"post-699635","1":"post","2":"type-post","3":"status-publish","4":"format-standard","5":"has-post-thumbnail","7":"category-uk","8":"category-united-kingdom","9":"tag-britain","10":"tag-england","11":"tag-great-britain","12":"tag-northern-ireland","13":"tag-scotland","14":"tag-uk","15":"tag-united-kingdom","16":"tag-wales"},"share_on_mastodon":{"url":"https:\/\/pubeurope.com\/@uk\/115904218745505539","error":""},"_links":{"self":[{"href":"https:\/\/www.europesays.com\/uk\/wp-json\/wp\/v2\/posts\/699635","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.europesays.com\/uk\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.europesays.com\/uk\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.europesays.com\/uk\/wp-json\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/www.europesays.com\/uk\/wp-json\/wp\/v2\/comments?post=699635"}],"version-history":[{"count":0,"href":"https:\/\/www.europesays.com\/uk\/wp-json\/wp\/v2\/posts\/699635\/revisions"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/www.europesays.com\/uk\/wp-json\/wp\/v2\/media\/42633"}],"wp:attachment":[{"href":"https:\/\/www.europesays.com\/uk\/wp-json\/wp\/v2\/media?parent=699635"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.europesays.com\/uk\/wp-json\/wp\/v2\/categories?post=699635"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.europesays.com\/uk\/wp-json\/wp\/v2\/tags?post=699635"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}