Where is the Unified Patent Court heading?

About this talk

Decisions of the UPC, in particular its Court of Appeal (UPCoA), are currently the most exciting thing that European patent law has to offer. Unlike decisions of EPO’s Technical Boards of Appeal and national courts, the decisions of the UPC cannot rely on jurisprudence that has developed and become differentiated over (many) decades. They are therefore free from the constraints that arise from such a framework, but they do not arise in a vacuum. Without citing them, the UPC frequently draws on solutions developed either in EPO’s decision-making practice or in the jurisprudence of national courts in UPCA and EPC member states.

This makes the UPCoA’s practice an important driver for the harmonisation of patent law in Europe. Since the UPCoA bases its decisions on solutions developed in EPO practice and national jurisprudence, the UPCoA’s decisions in turn influence the practice of the Boards of Appeal and national jurisprudence. The most striking example to date is decision G 1/24 of the EPO’s Enlarged Board of Appeal.

In developing its own method for assessing the obviousness of an invention, the UPCoA refers both to the EPO’s Problem-Solution Approach and to what it describes as ‘other approaches, sometimes referred to as more “holistic”, used in other jurisdictions such as Germany and the UK’. What is the result, and which model does the UPCoA’s approach most closely resemble?

The decision-making practice of UK and German courts in disputes over Standard-Essential Patents and their licensing on FRAND terms is diametrically opposed. Whilst in the UK, the EWHC determines FRAND terms upon request, German courts generally limit themselves to examining why the parties were unable to negotiate FRAND terms, whether due to an unwilling licensee or a patent holder who only wishes to license on supra-FRAND terms. What is the UPC’s position on this?

The CJEU ruling in BSH Hausgeräte GmbH v Electrolux AB (Case C 339/22) has added another contentious issue to this debate: will the UPC also decide on the validity of European patents in the UK with inter partes effect in future?
 

Our speaker, Honorary Professor of Practice Peter Meier-Beck, former Presiding Judge of the Patent Division of the German Bundesgerichtshof, will attempt to analyse and characterise the direction in which the jurisprudence of the UPC is developing.

Chair: Professor Sir Robin Jacob (UCL IBIL)