You (and/or your company) are accused of infringing a patent before the Unified Patent Court (UPC), or you anticipate that such a claim may be imminent? Time for action. But which actions can you take?
While this is undoubtedly a challenging situation, you are not left without options. The UPC offers a wide range of procedural defense actions that allow alleged infringers to protect their position, limit risks and, in some cases, even take back control of the dispute.
Below, we from Gevers have outlined the key procedural actions available to you, considered as an alleged infringer, depending on whether proceedings have already been initiated or whether a UPC claim is merely anticipated.
Protective letter
If you expect that a patent holder may apply for provisional measures against you, such as a preliminary injunction, you can file a protective letter with the UPC. This allows you to present arguments on non-infringement and/or invalidity in advance, thereby reducing the risk that provisional measures are granted without you being heard. A protective letter remains on the register for six months (with possible extensions) and can be a decisive tool to prevent ex parte decisions – initiated by a holder and unilaterally assessed by the UPC.
Stand-alone revocation action
If a patent poses a significant commercial risk to your business, you may proactively challenge its validity by filing a stand-alone revocation action before the UPC. If successful, the patent is revoked with effect for all participating UPC Member States, not just between the parties involved. This action can fundamentally reshape and/or avoid a future dispute, even before any infringement proceedings are launched.
Declaration of non-infringement (DNI)
A declaration of non-infringement allows you to ask the UPC to confirm that a specific act does not, or would not, infringe a patent. In this type of action, you take the initiative as claimant, while the patent holder becomes the defendant in the DNI action. Although the effect of a DNI is limited to the parties involved (inter partes), it can provide valuable legal certainty across all UPC Member States in a single proceeding.
Preliminary objection
Once you have been served with a statement of claim by the attacking patent holder, you may raise a preliminary objection within one month. This allows you to challenge the jurisdiction of the UPC, the competence of the designated division, or the language of the proceedings. Addressing such procedural issues at an early stage can have a significant impact on the direction and efficiency of the case.
Counterclaim for revocation
In infringement proceedings, you can challenge the validity of the patent by filing a counterclaim for revocation. This counterclaim must be included in your Statement of Defense and cannot be introduced at a later stage. If the counterclaim succeeds, the patent is revoked with effect for all UPC Member States, making this one of the most powerful defense tools available under the UPC system.
In addition to these procedural actions, alleged infringers may rely on a range of substantive defenses, including arguments on (a.o.) claim interpretation, non-infringement and exhaustion. These defenses are highly case-specific and benefit from early strategic assessment.
No matter the challenge, we stand by you as your strategic
partner. This is how we can support you.
