Pauline Debré (Linklaters): “There’s been a strong uptake of the Unitary Patent in the medical technology sector”

Leaders League: Which industries has the Unitary Patent been most popular with so far?
Pauline Debré: In reviewing the latest statistics from the European Patent Office (EPO), there’s been a strong uptake of the Unitary Patent (UP) in the medical technology sector, which accounts for nearly 12% of unitary effect requests. This clearly indicates a surge of innovation in that area. Civil engineering is also quite prominent, with 6% of the requests, closely followed by the transport sector at 5.5%.

It's important to point out, though, that these figures come from the international patent classification system, which has its limitations. One considerable challenge is accurately identifying the leading sectors, as patents can encompass multiple technological classes, making categorization a complex task.

That said, healthcare, particularly in pharmaceuticals as well as the broader chemical and biotech industries, undoubtedly plays a critical role in the Unitary Patent system. For instance, take Johnson & Johnson from the US – they have made a significant mark by becoming the first holder of a UP, with a total of 267 patents to their name. It’s a clear signal of the substantial value that large, research-driven companies place on this comprehensive patent framework.

Can you give us some details of the UPC cases Linklaters/you yourself have filed at the Paris Central Division since last June?
We have not filed any cases before the Paris Central Division yet. In December, we filed an infringement action on behalf of an Asian company with a large portfolio of LED technology patents against a French company before the Paris Local Division. This case is particularly complex due to the technology involved. The Paris Local Division’s ruling is expected to bring to light some procedural nuances, as the panel is composed of two French judges and one German judge. If the defendant files a revocation action, it will be interesting to see if the method used follows French or German legal practices. The same goes for determining infringement. Additionally, our client has started two parallel actions regarding different patents before the local divisions in Germany.

Pauline, you often handle patent disputes in the healthcare and telecoms sectors. Which branches of these sectors have seen the most cases before the UPC in the first six months of its existence? 
Overall, there are prominent cases in both sectors, but we have seen slightly more “actions” in telecoms at this point, depending on how one counts cases (the UPC’s CMS currently lists counterclaims for revocation separately).

In healthcare, pharmaceutical, biotechnology, and the medical device technologies were the subject of prominent cases such as the Amgen v. Sanofi-Aventis case (cholesterol medicine), 10x Genomics v. NanoString (composition and methods to analyte detection), Edwards Lifesciences v. Meril Life Sciences (prosthetic valve technology) and the Dexcom v. Abbot case (diabetes devices).

In the telecoms sector, we have seen UPC litigation cases involving Huawei, Philips, Nokia and Panasonic

In the telecoms sector, we have seen cases involving major companies such as Broadcom and Avago, and litigation involving Huawei, Philips, Nokia, and Panasonic. The Dexcom devices may also count as telecoms as it relates to connected devices. It is also worth mentioning the recent action taken by Dolby, which has filed UPC SEP lawsuits against Hewlett Packard and Asus.

When might the first landmark decision by the UPC be handed down, and what topic might it cover?
The UPC has already issued many orders, such as Preliminary Injunctions (PI) at the trade fair in myStromer v. Revolt Zycling (eBike) as the first penalty payment decision. The first PI decision in the 10x Genomics v. Nanostring has been issued and was the subject of an appeal heard on December 18th and a decision has just issued lifting the PI ordered in first instance. We do not know yet the motivation but suspect that the Court was not sufficiently convinced of the validity of the patent.

As for the first landmark decision on merits by the UPC, attention is drawn to Sanofi v. Amgen, which was the first to be filed. This case involves complex matters of patent validity and antibody technology. Considering usual legal timelines and the significance of thorough deliberations in such a case, the decision could likely come by the summer or the fall.

Over half a million European patents initially chose to opt out of the Unitary Patent. Was this just a wait-and-see strategy on behalf of patent holders or a sign of something more serious, and how has UPC managed to build confidence in the legal certainty of its patent system over the past six months?
While it is natural to take a wait-and-see approach with a brand-new system, the patent community is closely monitoring the early decisions. We are noticing that companies outside the EU are also showing a high interest in using the UPC as a forum, which speaks to its attractiveness.

The UPC promised to make fast, quality decisions. So far, they have shown their ability to quickly issue PI and ex parte orders, and their decisions have been well-reasoned. The UPC is also actively promoting the system and building confidence.

How will the UPC and Unitary Patent develop in the medium term, and what might the impact be on national patent courts?
It is still early to answer this question with certainty, but we are quite optimistic about the development of the UPC/UP. On the one hand, number of UPs could increase and the owners could choose to opt-in, and to file a European patent (EP) with unitary effect. On the other hand, it will depend on patent filing strategies. For instance, in the automotive sector, it is often sufficient to secure patents in 3-4 countries such as France, Germany, the UK, Italy, thus the UP/EP route is not necessarily appropriate. Companies may have a modulated strategy, filing a combination of patents (EP, UP, national patent) that best protects their interests.

Regarding the impact on the national courts, it is possible that judges who are split between UPC and national duties (e.g., German Courts) might decide to dedicate more time to the UPC as the number of cases grow. Nevertheless, it is clear that national courts will retain their roles in handling matters related to national patents, trademarks, designs and copyrights, so the proper resources should remain at national level.

The real test will come after the transitional period (seven years from 2023, if not renewed) which is more of a long-term matter. After that, the opt-out will no longer be an option, the UPC will have exclusive jurisdiction, eliminating any overlapping or concurrent competencies.