New certainty for handling of cases by the central division of the UPC
For the time being, UPC actions on many life science, pharmaceutical and medtech patents will be heard in Paris, with some cases to be heard in Munich

The Unified Patent Court (UPC) has issued a news briefing today confirming where healthcare cases will be heard in the central division, for the time being at least. Cases are being split based on the WIPO IPC category of the patent in dispute: cases involving patents in IPC section (A) will be assigned to the Paris central division seat, while cases involving patents in IPC section (C) will be assigned to the Munich central division seat.

The central division will hear infringement cases for Defendants domiciled outside of the EU, and all revocation and declaration of non-infringement proceedings (where existing infringement proceedings are not pending before another division of the UPC).

IPC section (A) covers “Human Necessities” which includes pharmaceuticals and medical devices, but also foodstuffs, tobacco, clothes, furniture, footwear, and some agriculture applications. In particular, this IPC section includes one of the main IPC categories for pharmaceutical and life science patents, A61K (“preparations for medical, dental or toiletry purposes”), along with many of the main IPC categories for medical devices, including diagnostic and surgical instruments (A61B), drug delivery devices (A61M) and various kinds of therapeutic equipment (e.g. A61N). On this basis, we expect to see a large number of cases across the spectrum of healthcare being heard by the Paris court. Four judges appointed to sit at that division are already known, whereas the list of appointed judges in the corresponding Munich one only lists two: Ms Mélanie Bessaud (FR), Ms Ulrike Voß (DE). The open positions should be filled in the next couple of weeks. Indeed, all judges of the first instance divisions will be taking their oath on 1st June 2023 at the Paris seat.

However, NCE (new chemical entity) pharmaceutical cases often have their main IPC category in section (C), such as C07. IPC section (C) also covers patents relating to peptides and nucleic acids. These cases will therefore be heard by the Munich seat of the central division.

Additionally, the Munich central division will hear cases in IPC section (F), relating to mechanical engineering, lighting, heating, weapons and blasting. The Paris central division hearing cases in all remaining IPC categories, including telecoms, as well as additional healthcare classifications related to bioinformatics (G16B), healthcare informatics (G16H) and computational chemistry (G16C). These IPC classes had been allocated in that way several years ago already, and no changes have been made. Today’s announcement simply splits the classes that were meant to be heard in the third seat of the central division between the two existing seats Paris and Munich, the result of which is a concentration of cases in healthcare coming under the competence of the Paris seat for the time being.

In practice, it seems unlikely that the court location will make much of a difference to the operation and outcome of UPC cases. Both central divisions will work in the language of the patent (which for the majority of European patents is English), and both will sit in a multinational composition of judges. Therefore, we expect that there will be a consistent experience between the two central divisions (in perhaps an analogous way to the EPO’s handling of cases between its offices in Munich, The Hague and Berlin). With its vast experience of EPO opposition and pan-EU litigation, Carpmaels’ team of UPC representatives is primed and ready to support our clients in the first UPC actions, expected to begin soon after the court opens on 1st June 2023.

This news indicates only a temporary solution. Following the UK’s exit from the EU and then their withdrawal from the jurisdiction of the UPC, the need to reallocate the responsibilities of the London seat of the central division had previously caused delays in the arrival of the UPC system (as discussed in our March 2021 article here). Although no final decision has been reached by the Administrative Committee, it is now expected that Milan will be the eventual third seat of the central division. Indeed, Italy is the third EU member state having ratified the UPC agreement with the most patent applications (which is a requirement), and Milan is the only city applying to host the central division seat. It remains unclear what cases will be heard by the Milan court, so we expect this temporary solution to be in place until this has been decided and implemented.

C&R is welcoming this news which provides further certainty around the operation of the UPC, the introduction of which is undoubtedly the biggest change to the European patent system in a generation. We are looking forward to representing our clients in the local, regional, and central divisions of the UPC, and through appeal proceedings.