2025 Week 26
This is the first in a miniseries of reviews of some hands-on, coalface practice of the UPC, guided by the UPC Court of Appeal (CoA). Here, we look at the UPC’s approach to time limits and in particular when the courts will allow extensions of time, and what to do when things have gone wrong. In subsequent instalments, we will look at when and why UPC appeals can have suspensive effect, and how the UPC CoA deals with applications for re-hearings.
Extra time – getting extensions
The significant workload of the UPC means that we are seeing plenty of case management orders. In particular at first instance, the courts have been asked for extensions of time in various circumstances. The courts’ basic approach is to note that the UPC Agreement itself aims for fast and high quality decisions, and so extensions of time should only be allowed exceptionally.
One clear emerging practice of the courts is seen when there are multiple defendants who have been served with infringement proceedings on different dates. Normally, this would mean that each defendant would have a different deadline for filing their defence and any counterclaim for revocation. Therefore the courts have taken a practical approach and typically decided on a single date for the defendants to file the defence and counterclaim. This is what we have seen in Genevant v. Moderna and Irdeto v. DJI for example. Where the parties agree with the plan, the courts will more readily allow such an arrangement, as in Shanghai Jinko v. Longi Solar and Samsung v. ZTE.
More generally, the courts have allowed some extensions of time in the written procedure, sometimes based on the agreement of all sides, as in Adeia Guides v. Walt Disney. And the court is more likely to grant a relatively short extension of time, given the minimal effect this has on the overall timetable (Maxeon Solar v. Solarlab and Polidoro v. Bekaert). Where there are unexpected circumstances, such as a conflict causing the grounding of air travel affecting members of the technical team assisting in the litigation, the court agreed to an extension of time in the face of objections from the other side (Centripetal v. Palo Alto Networks). Also, the court will have an eye to fairness – in DexCom v. Abbott, the court allowed DexCom an extension of time on the basis that Abbott had been granted one earlier in the proceedings.
The UPC will sometimes extend deadlines to ensure practical alignment between the UPC proceedings and parallel EPO proceedings - this was the case in JingAo Solar v. Chint and also in Dainese v. Alpinestars.
But there are plenty of cases where the first instance court has refused a request for an extension of time. In Truma v. CAN, the defendant requested an extension of the deadline for filing a preliminary objection and for filing the defence and counterclaims. This was refused, referring back to Seoul Viosys v. expert klein in which the court said that extensions of time should only be used with restraint and only in justified exceptional cases against the background of the UPC’s strict time limit regime. A similar result was seen in Xiaomi v. Daedalus Prime with a 2 week extension request refused for lack of convincing reasoning. In Mala v. Nokia, the Central Division Paris refused an extension of time for filing a defence to revocation while a preliminary objection on jurisdiction was being decided.
It is unusual for a party to try to appeal a decision about extension of time limits, unless the decision is fatal to the proceedings. For this reason, the UPC CoA has given only limited input on this issue. In Panasonic v. Xiaomi, the CoA commented that the first instance court has discretion to decide on extensions of time and that the CoA would be reluctant to interfere with that.
But in Hanshow v. SES-imagotag, a PI application was refused at first instance and on appeal. The defendant filed an application for their costs, but later than the one month deadline allowed by the rules. So they filed a request for a 3 day retroactive extension of the time limit. This was refused as inadmissible by the Local Division Munich. The court pointed out that the only remedy for the defendant in the circumstances would have been to file an application for re-establishment of rights.
This decision was appealed and the CoA upheld the outcome at first instance. The CoA appeared to say that in principle deadlines can be extended retrospectively (i.e. that the request to extend can be filed after the expiry of the time limit). However, they decided that no extension of time should be possible in this case. The CoA relied on the fact that R.9.4 RoP allows the court to extend time periods except for three specific instances: for starting proceedings on the merits after a saisie order or PI, or for filing an appeal. The view of the CoA was that extensions of time under R.9 RoP apply only to pending proceedings. Therefore extensions of time do not apply to the deadlines for starting a new but related proceedings. This is in order to protect legal certainty for the other side. They considered proceedings for costs (R.150 RoP) to be an example of this. Other examples include an application for determining damages (R.126 RoP), an application for a re-hearing (R.252 RoP) and an application for re-establishment of rights (R.320 RoP). These are important practical clarifications from the CoA.
There have also been a few cases where the parties have requested extensions of time in the appeal procedure. In ICPillar v. Arm, for example, the CoA granted an extension of time for filing the statement of response in the appeal, to take account of the fact that an unredacted copy of an exhibit had only been provided to the respondent late. In Phoenix Contact v. ILME, Phoenix applied for a 3 week extension of time for filing a response to the appeal, citing the complexity of the case. The CoA, concerned about equality of arms given that the appellant had a relatively short time to prepare and file its appeal, allowed an extension of only 3 days.
In Insulet v. Menarini, an appeal was filed against a refusal of a PI. The deadline for filing the statement of response to the appeal was 27 December 2024. But there were problems with the UPC CMS meaning that this could not be filed. Menarini filed the statement of response on 30 December 2024 with a request for a retroactive extension of time. The CoA said this was not needed. R301.1 RoP explains how deadlines roll over to the next working day if they land on a weekend or official holiday. R301.2 says that the same rule applies when documents filed in electronic form cannot be received by the court. The statement of response was therefore deemed filed on time.
Extra special time – request for re-establishment
Sometimes, a mistake means that you miss a deadline. Although the CoA has made it clear that a retroactive extension of time is in principle possible, in some circumstances it will be necessary to file an application for restitutio. Lionra v. Cisco was another example of a late-filed costs application. Both parties were entitled to some costs – the defendant filed their costs application on time but the claimants’ was 8 days late. The claimants requested a retrospective extension of time or, in the alternative, re-establishment of rights.
The Hamburg Local Division said that it was not possible for a request for an extension of time to be made after the deadline – they said that the reference to “retrospectively” in R.9 RoP was intended to cover the court deciding on a request for an extension of time that was filed before the deadline, but the decision being taken after the deadline. (This reasoning now might have been overruled in view of the CoA decision in Hanshow v. SES-imagotag, discussed above.) Anyway, their view was that the only way back for the claimant was to succeed with an application for re-establishment of rights under R.320 RoP.
In line with a similar mechanism used at the EPO, a successful request for re-establishment of rights requires the party to pay a special fee and to file evidence to show that a deadline was missed despite “all due care” having been taken. Note, though, that the time periods are different compared with EPO procedure. At the UPC, the application must be filed within 6 months of the missed deadline and within one month of the “removal of the cause of non-compliance” (i.e. within 1 month of the discovery of the mistake).
When assessing whether the “all due care” standard had been met, the court considered whether it should follow German national practice, EPO practice or CJEU case law. Predictably, but correctly, the court decided that there should be an autonomous UPC approach. On the facts, the court was satisfied that the attorney firm had an otherwise reliable system for capturing and monitoring deadlines, with appropriate supervision and checking, but that an oversight by an experienced paralegal had led to the deadline not being recorded. The request for re-establishment was therefore allowed.
