Timelines at the UPC – a challenge and an opportunity

The Unified Patent Court (UPC) has been at pains to highlight its ambition of being an efficient court for patent disputes, thereby providing timely access to justice for claimants.  As the Court settles into its stride, we look at how these ambitions are playing out in practice and how best to navigate the tight timelines and strict rules at the UPC.

Bold ambitions

From the outset, the UPC has not shied away from advertising its focus on procedural efficiency to potential users of the nascent European court system for patent disputes.

The focus on maintaining strict timelines is reflected in the Rules of Procedure (RoP) of the UPC. The Preamble to the RoP requires that proceedings be conducted so that a final oral hearing on substantive issues can take place within one year (while recognising that some actions may require more time and some actions may require less time).

Much like the appeal procedure at the European Patent Office (EPO), the procedure at the UPC is front-loaded, requiring both sides to set out their full cases as early as possible in the written procedure stage.  Thus, the Rules provide that the Court may disregard any step, fact, evidence or argument which a party has not taken or submitted within the time limits (Rule 9.2).  Moreover, a party seeking to change or amend their case must satisfy the Court that the amendment could not have been made with reasonable diligence at an earlier stage and, significantly, that the amendment would not unduly affect the other party (Rule 263.2).  Therefore, having a good reason to amend one’s case is not sufficient to have the amendment be admitted by the Court.

The Rules prescribe in full detail the time limits that each party must meet in the initial written procedure stage.  These tight time limits are illustrated in the Figures.  The written procedure is designed to end in six months from the service of claim for infringement actions that do not include a counterclaim for revocation and for revocation actions.  Where an infringement action includes a counterclaim for revocation, the written procedure is designed to end in eight months from the service of claim, or nine months if there is additionally an application by the claimant to amend the patent.  The written procedure, for the claim as well as any possible counterclaims, takes the general form of Statement-Defence-Reply-Rejoinder with the Rejoinder strictly limited to a response to matters raised in the Reply.

The specified time limits include judicial vacations (Rule 300(h)).  In Avago v Tesla (ORD_560542/2023), the Hamburg Local Division (LD) confirmed that the time limits have already been calculated to “enabl[e] a clarification of the facts and an internal coordination even during vacation periods”.

Failing to observe any one of these strict time limits may lead to the loss of rights or means of redress if one cannot show that the failure occurred despite all due care (Rule 320).  As EPO practitioners will know this is a very high bar to meet.  An automatic extension of a time limit is only provided for where the deadline falls on a non-working day (Rules 301.1 and 300(f)).  Otherwise, a party seeking to extend a time limit must apply to the Court with its reasons for such a request (Rule 9.3).

Extending time limits: from initial flexibility to “only with caution and only in justified exceptional cases”

The early period of the Court is marked by a relatively flexible attitude towards extending time limits.  Despite, in some cases, expressions of displeasure at the conduct of the parties and an eagerness that a culture of laxity does not take hold, the Court nevertheless assented to requests for extensions, especially where such requests were unchallenged.

The justification for this approach is most clearly formulated by the Munich Local Division in Edward Life Sciences v Meril (App_557291/2023).  The Court stresses that a vacation of the representative or their other professional burdens cannot justify an extension.  Moreover, it cautions that an extension of one deadline need not translate to an extension of subsequent deadlines.  Nevertheless, the Court recognises that “working with the new procedural law and case management system (CMS) poses significant challenges to all stakeholders.  Therefore, a practicable handling of the challenges that arise is required in the initial period” (emphasis added).  The Hague LD cited similar justifications to extend a deadline in Plant-e Knowledge v Arkyne Technologies (ORD_2223/2024) in mid-January 2024.  The justification is almost verbatim that used by the Munich LD in the decision referred to above without a reference to the “initial period”.  The reason for the application for an extension in Plant-e Knowledge was because of a misunderstanding of the Rules by the claimant as to when the Defence to the Counterclaim for Revocation must be filed.  The fact that the “consequences [of not allowing the extension] would be disproportionate” for the claimant seems to have been an important factor in this case.

Panasonic v Xiaomi (ORD_589559/2023, Munich LD, 27/11/2023) and Hewlett-Packard v Lama France (ORD_590941/2023, Paris LD, 18/12/2023) provide the first examples of the Court’s waning laxity when it comes to granting extensions of time limits.  In particular, in Hewlett-Packard v Lama France, the Court concludes, in fairly strong terms, that the “defendant cannot legitimately invoke its own negligence in not opening the exhibits [in good time…] to be granted its request for an extension”.  The defendant had cited problems with the CMS as a reason for requesting an extension.

In the back-to-back decisions in Dolby International v Hewlett-Packard (ACT_590145/2023) and

Seoul Viosys v expert e-Commerce (ORD_2555/2024) in late-January 2024, the Düsseldorf LD set a test for the exercise of the Court’s power under the Rules to extend time limits that seems to be grounded in the previously stated ambitions of the UPC.  The test requires that the discretion “only to be used cautiously and only in justified exceptional cases in view of the strict time limit regime”, a bar which was not met in the second case, in which the applicant cited difficulties with accessing the CMS.  The Paris Central Division (CD) followed the test set by the Düsseldorf LD in ITCiCo Spain v BMW (ORD_4804/2024) in rejecting the application for an extension of the deadline.  The court reasoned that “an impossibility or an extreme difficulty to meet the deadline which is attributable to the party requesting the extension of the deadline or its representative does not come into consideration […and a party must] submit a request for time extension as soon as it appears clear that the meeting of the deadline will not be possible”.

The Paris CD and the Düsseldorf LD later also rejected applications for an extension of the deadline in Roche Diabetes Care v Tandam Diabetes Care (ORD_9060/2024) and 10x Genomics v Curio (ORD_9718/2024), respectively.  Both these cases related to applications for extensions of time limits that were motivated by a desire to have parallel proceedings (on preliminary objections and confidentiality proceedings, respectively) be concluded before submissions needed to be filed.  Moreover, the presence of an intervener on behalf of a party and the need to coordinate the filing of a submission is also not a sufficient reason to extend the party’s time limit, even if the intervener has faced problems with the CMS (ORD_13006/2024, Paris LD).  Nor is the mere fact that the language of proceedings was changed by agreement of the parties (ORD_16799/2024, Munich LD).  Furthermore, an justification for an extension in, for example, the main claim does not provide a justification for an extension of the time limits in, for example, the counterclaim per se (ORD_40297/2024, Munich LD).  Each extension must be considered independently and justified separately.

The recent cases highlight the fact that the UPC divisions are likely not to be sympathetic to problems with the CMS per se.  But what constitutes a sufficient reason for the Court to grant an extension of a time limit?  In Amgen v Sanofi, the Court of Appeal ruled (ORD_580110/2023) that failure by the claimant to upload annexes along with the Statement of Claim

is sufficient to constitute a reasoned request for an extension of the time limit for filing the Statement of Defence “regardless of the nature and/or content of the Annexes”.  This principle was followed by the Hamburg LD in 10x Genomics v Vizgen (ORD_581626/2023).  A ruling in parallel proceedings in a member country (such as Germany) that is close to the deadline is likely to constitute a sufficient reason for an extension, especially where the applicant agrees to a corresponding shortening of subsequent deadlines so that timelines are not affected (Philips v Edrich, APP_598024/2023, Munich LD).  Where an action has been extended to include a new patent, the defendant’s deadline for filing a Statement of Defence will be extended by a period corresponding to what would have been granted had a separate action been filed, but no more (Netgear v Huawei, App_595631/2023, Munich LD).  Moreover, where access to unredacted pleadings was restricted to the representatives due to an application for confidential information, the relevant time limit begins from when the party’s employees were granted access to the relevant information (Fujifilm v Kodak, ORD_18050/2024 and Dolby v Asus, ORD_35903/2024; both Düsseldorf LD).  This recognises the fact that a strategy can only be formulated once the party can freely exchange information with its representatives.

Some uncertainty remains as to how the Court will deal with actions involving multiple defendants who are inevitably served on different dates.  In Edward Life Sciences v Meril (ORD_562614/2023), the Munich LD ruled that extending some time limits to align the time limits for all the defendants is not a good enough reason for granting extensions, because time limits may also be shortened.  Nevertheless, extensions were granted in view of the challenges in the initial period.  In Dolby International v Hewlett-Packard (ACT_590145/2023), where the Düsseldorf LD set its strict test on granting extensions, a “slight extension” (emphasis in original) was granted in view of the defendants’ willingness to simply the conduct of proceedings.  In contrast to the reasoning in the above-cited cases, in AGFA v Gucci (ORD_576288 /2023, Hamburg LD) and Dexcom v Abbott (ORD_7657/2024 and ORD_7664/2024, Paris LD), extensions for alignment of time limits were granted as a matter of course.

Navigating the written procedure

The Sanofi v Amgen case (UPC_CFI_1/2023) provides a good example of how the ambitious timelines and strict rules governing the written procedure work in practice.  This revocation action filed in the Munich CD on 29 June 2023 with a final oral hearing held on 4 June 2024 meets the UPC’s aim of having a final oral hearing within one year.

No extensions were applied for in this case.  However, there was an unsuccessful preliminary objection by the defendant that the action was inadmissible owing to an infringement action taking place between the parties in the Munich LD.

Nevertheless, the claimant was able to work the timelines to their favour by introducing a response in the written procedure to the defendant’s Rejoinder without giving the defendant an opportunity to reply.  The decision of the Munich CD in this case (ORD_2233/2024) rests on the fact that the defendants raised new points in the Rejoinder and the response was brief and solely confined to addressing the new points that were raised.

This decision provides a cautionary tale that a party who wants to avoid giving the opponent further opportunities for submissions should be careful not to raise new points later in the proceedings.  Furthermore, a party seeking to respond outside the usual process should confine the response strictly to the new points raised and keep it brief.

Moreover, ensuring that the timelines to oral hearing are not affected is another important consideration.  In Meril Italy v Edward Life Sciences (ORD_10310/2024), the Paris CD refused an application by the Claimant for further exchanges of written pleadings on the basis that the Defendant had introduced a new defence in their Rejoinder.  The rationale for the refusal was largely based on “the aim that proceedings are concluded rapidly”.

Conclusions

The pattern at the UPC is becoming clear – strict timelines are there to be obeyed. Whether this feels like rigidity or predictability may depend on the perspective of the parties, but it is clear that optimising your strategy will include optimising how you are positioned with regard to this process. There is a clear advantage to the party bringing the action since they have some control of when the clock starts. Once disputes in other forums come into view (for example, consider co-pending EPO Oppositions and UPC Revocations) the strategic advantage is multiplied. It is also clear that any party subject to an action must react quickly and decisively in order to reduce this asymmetry as soon as possible.