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The Unified Patent Court's first decisions provide insights into the future


Helsinki Local Division of the Unified Patent Court (UPC) has issued its first decision. Also other local divisions have issued some orders regarding provisional and protective measures. Considering the swiftness of proceedings in the UPC, more case law will be formed in the near future.

Since the Unified Patent Court (UPC) started its operation 1 June 2023, a reasonable number of actions have been brought before the court: 42 infringement actions, 19 revocation actions and six applications for provisional and protective measures. By far the majority of infringement actions and all applications for protective measures, with the exception of one application in Finland, have been filed to the local divisions in Germany. The actions for revocation are primarily pending before the Central Division in Paris. Only a few of the actions for revocation are related to the same patent as the pending infringement actions. The Court of Appeal in Luxembourg has received two appeals concerning orders issued by Court of First Instance.

More than 500 000 opt-out requests have been filed to the UPC, indicating that patent applicants and holders have opted their patents out of the jurisdiction of the UPC. This amount in practise forms a significant portion of European patents and reflects a cautious approach to the UPC. On the other hand, a large number of European patents still fall within the jurisdiction of the UPC, and less than a third of European patent holders seem to choose the Unitary Patent.

In light of these figures, it seems that the UPC has begun its operations with a moderate number of cases. Litigations are predominantly focused to Germany, as expected.

First decision in Finland

In a significant portion of the cases pending so far (30) before the UPC, the defendant has raised a preliminary objection with which the jurisdiction and competence of the Court or the competence of the selected Division may be challenged. This was also the case when the first infringement case was handled in Helsinki Local Division.

Helsinki Local Division recently issued its first decision in the infringement case that involved an application for protective measures. The infringement action concerned AIM Sport Vision AG’s European Patent EP 3295663 and it was brought before the Helsinki Local Division based on the defendants’, Supponor Oy (5), principal place of business.

The patent holder had filed an opt-out request concerning the said patent 12 May 2023, excluding the patent from the jurisdiction of the UPC. However, the patent holder had withdrawn the opt-out request 5 July 2023 and filed an infringement action and an application for provisional measures seeking preliminary injunction before the UPC on the same day.

The defendants argued in the preliminary objection, among other things, that the infringement action and the application for provisional measures should be dismissed based on the non-competence of the Court due to ineffective withdrawal of the opt-out request. Due to the urgency of the matter, the Court summoned the parties to an oral hearing and exceptionally delivered its decision orally immediately after the hearing held 22 Sept 2023 (in writing 20 Oct 2023).

The Court accepted the defendants’ preliminary objection on the grounds that infringement and revocation proceedings related to the patent were already pending in German courts at the time of the withdrawal of the opt-out request which prevented the effective withdrawal of the request pursuant to Article 83(4) of the Agreement on the Unified Patent Court (UPCA), rendering the UPC without competence to hear the cases.

The patent holder had argued that Article 83(4) UPCA cannot be applied to national infringement and invalidity proceedings that have been pending on 1 June 2023. In the reasoning of the decision, the Court stated that the wording of Article 83(4) UPCA is clear and unambiguous in this regard and does not define a time limit as presented by the patent holder. Filing an opt-out request is a strategic choice that can prevent re-entry into the jurisdiction of the UPC in such situations.

UPC's proceedings in the light of the first decisions

Within the first five months of its operation, the UPC has already issued few orders related provisional measures, providing insight into how the Court interprets the requirements for granting provisional measures or evaluates the significance of protective letters when seeking a preliminary injunction without hearing the defendant. Preliminary injunctions have been handled urgently if requested, enabling quick and effective enforcement. The proceedings have progressed at the speed expected by the parties.

The territorial scope of UPC's decisions is exceptionally broad and depends on whether the claims are based on a unitary patent or a “classic” nationally validated European patent in the countries where UPCA is in force (17 EU countries). Based on the first decisions given, the UPC appears as an effective alternative for solving international patent disputes in such countries.

The development of UPC's role in relation to national courts will depend on whether the patent holders become convinced of the benefits of the unitary patent system and of the advantages of the new international court. The beginning seems promising.

Sini Petsalo
Associate Partner, Industrial Property Attorney, Licensed Trial Counsel, European Trade Mark and Design Attorney
+358 40 540 2505