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Background
3 June 2024

Bifurcation at the UPC: a trend emerging?

When a patent proprietor asserts that their patent is infringed, it is traditional for the defendant to respond by arguing not only on the question of infringement but on the question of the validity of the patent. Traditionally, the German courts have handled these two questions in independent proceedings (a so-called “bifurcated” approach) while it is more common in other jurisdictions to hear the two issues side-by-side in a combined action.

The issue of whether the Unified Patent Court (UPC) ought to be bifurcated or not was one of the key choices that had to be made in the development of the Court. The architects of the system hoped to marry the best aspects of national patent practice together, but of course that relies on a consensus view as to what best practice constitutes. In the end, the UPC was constructed with a degree of discretion left to the judges: when a counterclaim for revocation of a patent is included together with a defence to infringement, the Court can choose whether to bifurcate the proceedings or not.

There had perhaps been nervousness from practitioners unused to bifurcation that the UPC might mean a spread of this practice more widely; a perceived risk of a bifurcated approach was that an injunction can in theory be enforced based on a patent that has not yet had its validity tested. Additionally, concerns had been raised that the application of this procedure might vary depending on the national traditions individual judges were familiar with, leading to inconsistency between the divisions of the Court. In practice, during the first year of the UPC’s operations, these fears do not appear to have been realised.

Background

At the UPC, bifurcation occurs when a local or regional division hearing an infringement case refers a counterclaim for revocation to the central division. Article 33 of the UPC Agreement is the controlling provision, and gives the local/regional division hearing an infringement action the choice when receiving a counterclaim for revocation action to:

  • Proceed with both the infringement action and the counterclaim for revocation (in which case an additional technical judge is added to the judicial panel);
  • To refer the counterclaim for revocation to the central division (i.e. to bifurcate proceedings) and, if so, to consider whether a stay is appropriate pending the central division’s processing of the claim; or
  • If the parties agree, to refer both the infringement action and the counterclaim for revocation to the central division.

If the infringement action had initially been brought before the central division, then no bifurcation is possible – any counterclaim will also be heard at the central division.

Discretion of the Court: to bifurcate or not to bifurcate?

In giving the power to the local/regional divisions to bifurcate, the UPC Agreement could potentially provide for differing practices before different judges/divisions; perhaps judges more familiar with a bifurcated approach might be more inclined to separate the issues. Given that bifurcation can be perceived as patentee-friendly, this itself could further lead to forum shopping. With these aspects in mind, early decisions of the court have been watched closely.

So far, a clear pattern appears to be emerging: bifurcation is the exception, rather than the rule, even at the German local divisions.

For example, orders from the Düsseldorf local division have provided useful guidance on this issue. In three separate, but similar, decisions (ORD_586970/2023, ORD_581034/2023, ORD_589338/2023), the local divisions used its discretion to decide to proceed to deal with both the infringement and revocation actions jointly. In all three cases, the parties did not object to this approach.

Notably the Düsseldorf local division suggests that a combined approach to infringement and validity is likely to be more efficient and, moreover, may have benefits in substance since it facilitates a uniform interpretation of the patent by the same panel of judges. The court suggests that a uniform approach is “all the more justified” if the technology is not too complex and the number of validity attacks is “manageable”.

The manner in which the court has set out the most commonly cited advantages of a non-bifurcated system is particularly interesting given the judges involved. Two of the judges, Bérénice Thom and Ronny Thomas, were both, until the initiation of the UPC last year, judges of the (Higher) Regional Court of Düsseldorf, with Thom still acting as a presiding judge in the Regional Court. The idea that judges would be beholden to the national traditions from which they come seems to be off the mark.

Moreover, it is not just the Düsseldorf local division that has proceeded in this way. More recent orders from the Mannheim local division (ORD_7587/2024, ORD_7453/2024, ORD_7586/2024, ORD_7584/2024, ORD_7585/2024, ORD_7452/2024) also set out similar principles: avoiding bifurcation is generally preferable in terms of efficiency and content. The suggestion is that the baseline case is that bifurcation will be avoided, and parties who wish to separate the cases must overcome this default.

Outside of Germany, the Hague local division has also avoided bifurcation (ORD_8243/2024). Again, the court noted both the potential benefits of efficiency and uniform interpretation that may arise from keeping the cases together.

Still a window open?

In the cases highlighted above, the parties have in general not pushed to see the matters bifurcated. It remains to be seen what arguments in favour of bifurcation might overcome the apparent default approach for unified proceedings.

That the provisions of the UPC allow the parties some flexibility was perhaps highlighted in the order of the central division in ORD_578356/2023. This decision allowed a free-standing revocation action to proceed at the central division, despite the existence of an infringement action (with its own counterclaim for revocation) at the Munich local division regarding the same patent. Such a circumstance is generally not permissible when the actions involve the same parties, but here the court found sufficient distinction between Meril Italy Srl (bringing the revocation action at the central division) on the one hand, and Meril Life Sciences Ltd together with Meril GmbH (the defendants in the infringement case) on the other, to allow the cases to proceed in parallel. This was despite the fact that there was clearly some overarching coordination between the different entities.

Final remarks

The UPC appears to be settling into a regime in which bifurcation is the exception, rather than the norm. As the courts themselves suggest, this is likely to support overarching aims for swift and efficient proceedings while at the same time mitigating concerns that alleged infringers may be subject to unwarranted injunctions. Nevertheless, the court reserves its flexibility to proceed in a bifurcated manner should the situation demand it.

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