Timeline of Infringement and Revocation Actions Before the Unified Patent Court (UPC)
The Unified Patent Court (UPC) opened its doors on June 1, 2023, marking a significant change in patent litigation across participating EU member states. The UPC's proceedings were designed to be streamlined and efficient, targeting resolutions within a strict 12-14 month timeline. This resulted in the issuance of the first decisions on the merits for several cases in July 2024, demonstrating that the UPC can effectively resolve both infringement and invalidity disputes within the short timeframe it has set for itself. With decisions on the first cases having been issued, it is timely to look at the procedures involved in bringing both infringement and revocation actions before the UPC, and highlight the key steps in each process.
In general, both infringement proceedings and revocation actions brought before the UPC follow a strict structure, comprising three main phases: the written procedure, the interim procedure, and the oral procedure.
As shown in figure 1, the written procedure for infringement actions begins when the claimant files a Statement of Claim outlining the alleged patent infringement. The UPC Rules of Procedure (RoP) establish that this document must contain all relevant facts and evidence supporting the claim, including details of the infringement, such as the date, place, and specific patent claims that have been violated. The claimant’s initial filings must be thoroughly prepared, as the UPC’s process is front-loaded, requiring comprehensive arguments and evidence from the start.
Once served, the defendant has one month to submit Preliminary Objections (e.g., challenging the UPC’s jurisdiction or the language used). The defendant is given three months to file a Statement of Defence, which may include a Counterclaim for Revocation of the patent. If a counterclaim is made, the court must decide whether to handle the infringement and revocation issues together or bifurcate the proceedings, referring the revocation claim to the Central Division while continuing the infringement case separately.
Following the defence, the claimant has two months to respond with a Reply to the Defence and, if applicable, to the counterclaim for revocation. The defendant is granted two months to file a Rejoinder to the Reply which may include further arguments concerning the counterclaim. However, this period is limited to one month in case no counterclaim for revocation has been filed. Finally, the claimant may respond within 1 month(*?) with a Rejoinder to the defendant’s arguments regarding the counterclaim for revocation.
It is noted that the defence to the counterclaim for revocation may also include an Application to Amend the patent where amendments are proposed for instance in the form of Auxiliary Requests. The defendant can (within 2 months) submit a Defence to the Application to Amend the patent, followed (within 2 months) by a Reply to the Defence by the Claimant and a Rejoinder to the Reply by the defendant (within 1 month).
Figure 1: Timeline of the written procedure for infringement actions
The written procedure for a revocation process (shown in figure 2) follows a similar timeline as the infringement proceedings and is initiated when the claimant files a Statement for Revocation with the UPC. This document is served on the defendant by the UPC Registry. The defendant has one month to file Preliminary Objections, such as challenging UPC’s jurisdiction or the language of the proceedings, and two months to submit a Defence to Revocation. This defence may include a request to amend the patent and/or a counterclaim for infringement.
After receiving the defence, the claimant has two months to file a Reply to the defence and, if applicable, respond to any requests to amend the patent and/or counterclaims for infringement. The defendant is granted one month to file a Rejoinder to the claimant’s reply. If additional issues are raised (such as amendments to the patent), the written procedure may involve further rounds of replies and rejoinders.
Figure 2: Timeline of the written procedure for revocation actions
The written phase typically lasts up to 8 months and is designed to exhaustively present all arguments, evidence, and counterarguments from both parties before advancing to the interim stage.
The interim procedure is managed by a judge-rapporteur and aims to prepare the case for the oral hearing. This phase lasts up to three months and involves clarifying disputed facts, assessing the need for additional evidence, and exploring the possibility of a settlement between the parties. The judge-rapporteur may order additional pleadings, evidence, or documents and may hold an interim conference, typically by video or telephone.
The entire process is concluded with an oral procedure which generally involves a one-day hearing, where the presiding judge may impose time limits on the parties’ submissions. The hearing is usually public, and witnesses or experts may be called upon. The UPC is expected to issue its decision within six weeks of the oral hearing. In some cases, an immediate decision may be announced at the hearing, with detailed reasoning provided later.
The entire infringement and revocation procedure typically concludes within 14 months, barring any complications.
The UPC offers a streamlined, front-loaded procedure for both infringement and revocation actions. The focus on efficiency and short timelines, typically within 12 to 14 months, requires quick and thorough preparation from both claimants and defendants.
De Clercq and Partners has a large team of 19 qualified European Patent Litigators covering all fields of technology who stand ready to provide advice on infringement, revocation, and other legal aspects of the UPC particular to your circumstances. Feel free to contact us at info@dcp-ip.com.
