10 August 2023
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With the UPC opening its doors just over two months’ ago, the IP profession has been keenly watching the actions brought before the new court.

So far, the majority of cases appear to be ‘run-of-the-mill’ infringement and revocation actions and mostly in the engineering and physical sciences space.

However, a point which had significant discussion ahead of the court opening is the degree to which the UPC will hear actions relating to standards essential patents (SEPs). Specifically, from the wording of the agreement underpinning the UPC it would seem that the court may not be able to decide on FRAND licensing requests which were not made as a defence to a claim of infringement. That is, the UPC may not be able to decide on the terms of a FRAND license or make a declaration on the essentiality of a patent to a particular standard as an independent claim (a so-called declaratory judgement).  

This may become clearer however, as the first major SEP campaign has been launched by Panasonic against OPPO and Xiaomi. Since 31st July, seven infringement actions have been filed by Panasonic at the UPC (making up 20% of the viewable infringement actions at the UPC). This, however, wasn’t the first SEP action to be launched at the UPC. That honour goes to Huawei Technologies, who on 3rd July 2023 filed an infringement action against NETGEAR under EP 3611989 (a patent relating to the Wi-Fi standard). 

It seems then that the UPC is being embraced by holders of SEPs. What remains an open question is the degree to which the UPC is willing to assert itself as a key jurisdiction for hearing such disputes. For example, the UK has made efforts to cement itself as a preferred venue by its ability to require global FRAND licenses. It seems likely that the UPC will want to establish itself as a key venue for disputes, and a part of that in the current litigation landscape would be the ability to make declaratory judgements relating to standards essential patents.

More information

For any SEPS related queries please contact our team here. 

 

Guide to the Unitary Patent and Unified Patent Court-1

The Unitary Patent and the Unified Patent Court - A guide


Find out more about the Unitary Patent and Unified Patent Court with our detailed guide. This covers a summary overview of both as well as details around costs and processes to obtain a unitary patent and a comparison of pros and cons.

We can handle all aspects of litigation at the UPC, both offensive and defensive actions.

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Tom is a Partner and Patent Attorney at Mewburn Ellis. He handles a wide range of patent work, including original drafting, prosecution and opposition, particularly defensive oppositions, in the engineering, electronics, computing and physics fields. Tom also advises on Freedom-to-Operate, infringement issues and registered designs.
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