Below, Prof. Willem Hoyng provides his unfiltered views on the decisions that were published on the website of the Unified Patent Court (“UPC”) last week. His comments offer a unique insight into the UPC’s case law, as he chairs the Advisory Board of the UPC and participated in drafting the Rules of Procedure of the UPC.
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16 May 2025
Local Division Düsseldorf, DDP v Greenchemicals
Confidential Information
Facts
A demand for protection of confidential information per R. 262A RoP.
The defendant requests that the proposed penalty for a culpable breach be dropped.
Decision of the Judge-Rapporteur (JR)
The JR imposed a penalty in case of culpable breach. If the information is public, then the order is not applicable. The defendants have not shown this to be the case because the applicant argued that its licensees do not communicate agreed prices to their customers, and the defendants did not demonstrate otherwise.
Comment
- In my view, this is a model standard order. The access to the information is restricted to “the representatives” (and one named person of the defendant). The representatives are held responsible for a culpable breach by their team members. So there is a certain flexibility as to who the representatives want to use as team members, as not all team members have to be named. The JR furthermore specifically states that the obligation to maintain secrecy continues after the end of the case.
- I note that this order does not mean that the information will not be disclosed to a member of the public who is given access to the Register because the claimant did not yet ask for the application of R. 262.2 RoP. However, the claimant has 14 days to do so after a request by a member of the public is made, but it seems more practical to ask for the application of R. 262.2 RoP together with an R. 262A RoP request.
19 May 2025
Local Division Mannheim, Malikie v Discord
Streamlining proceedings
Decision of the Judge-Rapporteur (JR)
In this case, the two defendants belonging to the same group were served on different days more than two months apart. Parties agreed on a date for the Statement of Defence which was longer for one but shorter for the other defendant in order to have the same dates for (all) the written submissions.
The JR ordered according to the agreement of the parties..
Comment
As I have said before, this makes a lot of sense and should be standard practice between representatives.
20 May 2025
Court of Appeal, Chint v Jingao
Suspensive effect
Background
Jingao initiated an infringement action against Chint and five other defendants. A counterclaim for invalidity was filed by Chint. Jingao’s request for security for costs was granted.
Chint appealed that order and requested suspensive effect for the appeal or expedited appeal proceedings..
Court of Appeal
(dealing with request for suspensive effect and request for expedited proceedings)
Refuses the requests. For suspensive effect, the Court refers to IC Pillar v ARM of 19 June 2024 (UPC_CoA_301/2024). Suspension is an exception to the rule that an appeal has no suspensive effect.
Chint did not show that providing security was an undue burden.
Expedite appeal
No sufficient reason to grant that and shorten the respondent’s normal time to respond in the appeal as provided for in the Rules of Procedure.
Comment
These requests clearly had no merit and should not have been made. Before filing these types of requests, read the case law, and if it is clear that a request has no merit, do not file it.
It saves your client money and the Court’s precious time.
20 May 2025
Local Division Düsseldorf, Roche v Tandem
Confidential information
Background
Some defendants, all belonging to the Tandem group of companies, asked for protection of certain confidential information on the basis of R. 262A RoP.
Decision of the Judge-Rapporteur (JR)