LSHC Horizons Brochure 2024 - Flipbook - Page 50
Hogan Lovells | 2024 Life Sciences and Health Care Horizons | Litigation
50
Life sciences cases in the UPC
On 1 June 2023, the first truly European Unified
Patent Court (UPC) opened its doors. Contrary to
most expectations, life sciences cases – primarily
covering technical classes (CPCs) of Human
necessities (A) and Chemistry and Metallurgy
(C) – have featured prominently during the first
eight months of the UPC, and account for almost
half of all UPC cases. However, with the exception
of a small number of pharmaceutical innovator
companies, the majority of cases come from the
device and diagnostics side of life sciences. This
is likely because the vast majority of the global
blockbuster drug related patents were “opted out”
during the so-called “sunrise” period before the
court system became operational, meaning that
these patents can only be enforced and attacked
in the “traditional” way through the national
court systems of the participating Member States.
An attractive venue for
revocation actions
As anticipated, it appears that the UPC
is particularly attractive to life sciences
companies trying to revoke competitor patents.
Unless opted out of the jurisdiction of the
UPC, European Patents can now be attacked
with a single central revocation action for all
participating Member States without the need
for parallel “country by country” litigation and
has already proven an attractive pathway
for litigants.
Dr. Andreas von Falck
Partner
Dusseldorf
The patentee’s perspective
Looking forward
Leaving aside the threat of central revocation,
the UPC is an attractive venue for patentees.
With life sciences companies usually validating
their patents across all participating Member
States there is substantial potential for broad
injunctions including preliminary injunctions
(such as in the proceedings No. UPC CFI
2/2023). The patentee can obtain broad
protection across all participating Member
States even when there has only been a single
act of infringement in one UPC-member state.
Additionally, the UPC allows broad seizure
and inspection rights for patentees, e.g., with
a view towards inspecting generic/biosimilar
manufacturing processes, or seizing documents
regarding regulatory approval or supply chains
throughout Europe by the combined use of
different tools, such as the order for inspection
of premises (similar to the saisie-contrefaçon
in France).
It seems likely that some companies are
purposefully using the court at this early stage,
while a harmonized body of UPC case law
has not yet been established. Different UPC
judicial panels may still rule issues differently.
For example, there is evidence of plaintiffs
choosing different venues within the same
enforcement campaigns, e.g., the Nordic-Baltic
regional division in Stockholm and the Munich
local division in a life sciences case, or different
local divisions within Germany, in a recent
telecoms case.
In return for such broad remedies, the patentee
has to weigh the risk of central revocation
and the uncertainty of being subject to a new
system without, currently, a sufficient body
of case law and developed precedents. In this
regard it is very interesting to note that 17 of 25
isolated revocation actions are in the field of
life sciences. In other fields, revocation actions
are mostly brought by way of a counterclaim.
Thus, not only patentees are making use of the
new court system.
Lea Gröblinghoff
Associate
Dusseldorf
Currently, the preferred local division for life
sciences cases is Munich, followed by Paris, the
Nordic Baltic regional division, and Düsseldorf.
While the number of cases in the UPC is
rising, it is clear from the cases filed to date
that in many important cases, patentees have
continued to file infringement proceedings in
Member State courts in parallel. In the long
run, we expect that the UPC will not replace
national courts in the enforcement of patents
but that it will be an (albeit essential) element
in enforcement strategies, always accompanied
by national actions in most important local
markets. Unlike in pharmaceuticals, where key
products are often protected by only a small
number of key substance, process or indication
patents, in other areas such as diagnostics or
devices the portfolios are often larger and the
individual patents less valuable. Therefore,
we expect to see these parallel enforcement
strategies more often in these areas.
