UPC webinar: first cases ‘obviously connected’ to existing proceedings

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

UPC webinar: first cases ‘obviously connected’ to existing proceedings

Europe blue map big data visualization. Futuristic map infographic. Information aesthetics. Visual data complexity. Complex europe data graphic visualization. Abstract data on map graph.

A Hogan Lovells lawyer said during a UPC webinar that most infringement and revocation actions filed at the court so far have been connected to existing national disputes

Most infringement actions filed at the Unified Patent Court appear to be related to existing national proceedings, according to a senior lawyer.

Christian Stoll, partner at Hogan Lovells in Hamburg, provided his perspective during a webinar hosted by the firm today, June 21.

Stoll, who was discussing whether any legal trends could be seen since the court opened its doors on June 1, said: “It appears to me that the currently existing proceedings somehow relate to already existing disputes.”

Revocation actions filed so far are also obviously connected to pending national disputes between parties, Stoll said.

Protective letters

Also during the webinar, Stoll recommended some defence arguments that counsel could include in protective letters filed at the UPC.

Protective letters, which are commonly used in Germany but not in all individual UPC member states, are submitted by parties whose patents are subject to preliminary injunction requests.

The court has to consider the arguments outlined in such letters rather than making an ex parte decision.

Stoll noted that it’s tricky for defendants to present credible non-infringement arguments while trying to avoid educating the patentee on how its product works.

He added: “In particular, if it comes to claim construction, you have to be very selective on how to present your defence case. The key goal is to avoid an ex parte ruling and convince the court to schedule an oral hearing.”

Stoll suggested that invalidity arguments should also be addressed in a protective letter, highlighting an advantage of the UPC for defendants in this regard.

“In the UPC you’re a bit better off than in German proceedings because the UPC will also have to look at the validity of the patent because it’s competent to hear validity [arguments].”

He also said counsel should use a lack of urgency defence in a protective letter because urgency is a requirement for securing a preliminary injunction.

“If you can explain ‘look, the patentee knew this infringement situation for ages and did not act’, this is a very strong argument against a preliminary injunction.”

Balancing act

Stoll said outlining the specific harm the preliminary injunction could cause might also work as a defence argument, but that this is tricky to demonstrate.

“On the one hand it’s important of course for the balancing of interests, so it should basically go in.”

However, he went on to state that on the other hand, the bigger a business is then the larger the harm on the patentee side.

“So, it’s very important how to present this,” he said.

Stoll added that if a party wants to use a licensing or exhaustion defence then the defendant has to justify this in detail because the burden of proof rests with it.

"If you want to rely on such arguments you would have to explain this in somewhat more detail, otherwise the court may consider this as insufficient," he said.

The webinar was part of a new series by Hogan Lovells called ‘The new Unitary Patent and Unified Patent Court – Kick-start 2023’.

Stanislas Roux-Vaillard and Gertjan Kuipers, Hogan Lovells partners in Paris and Amsterdam respectively, also participated.

more from across site and ros bottom lb

More from across our site

Louis Ederer, who worked at Arnold & Porter for 18 years, says he was excited to go back to a place where he already knew a lot of people
Awards
Practitioners and law firms should keep their eyes peeled as the shortlist for our annual Awards is set to be released
Shoosmiths, which hired a six-person IP team from Locke Lord to kick-start the year, says it is not finished there
The USPTO’s latest search tool has improved since it was first launched, though counsel still have to take care when trying to get optimal results for their clients
Scott Palmer, who took 16 lawyers with him when he moved from Perkins Coie to Loeb & Loeb, reveals how his Beijing-based team has hit the ground running
Coke Morgan Stewart previously spent 10 years in various USPTO roles before joining O’Melveny in 2023
Law firm Stephens Scown secured victory for its client in a dispute over two cider products
The Court of Appeal said the UPC can award damages based on a national court’s infringement ruling, giving the last laugh to the lawyer who filed the case
AI
Robert Guthrie at Osborne Clarke runs through the government’s AI and copyright consultation and considers the expected challenges
A lawyer firing Meta as a client has reinforced why the industry should not shy away from losing business from those with questionable ethical standards, even if it comes at a cost
Gift this article