Gide x Regimbeau – Patent Litigation: six months after the entry into force of the UPC, feedback from French actors involved in the first cases before the UPC at a conference organized by the AAPI and ASPI in December 2023

On 7 December 2023 in the auditorium of the Maison des avocats in Paris, a round table was held on the first feedback from the Unified Patent Court ("UPC"), six months after its entry into force, followed by a discussion with the public.

Co-organized by the Association des Avocats en Propriété Industrielle (AAPI), chaired by Sophie Micallef, and Les Spécialistes en Propriété Intellectuelle de l'Industrie (ASPI), chaired by Géraldine Guery Jacques, the French actors who took part in the first cases before the UPC shed light, for the first time, on the practical aspects of proceedings before the Jurisdiction, sharing their thoughts on the preparation and conduct of cases and their feedback.

Magistrates, attorneys-at-law, patent attorneys and industrialists gathered there, including UPC representatives Emmanuel Larere (Attorney at law and Partner at Gide) and Anne Seibel (Patent attorney and Partner at Regimbeau), illustrating the dynamism of the Gide x Regimbeau - Patent Litigation partnership, alongside:

• Camille Lignières and Carine Gillet, Legal judges at UPC Paris Local Division
• Eric Augarde, UPC Technical judge
• Amandine Métier, Attorney at law at Hoyng Rokh Monegier
• Mathilde Rauline, Head of Greater Europe Patent Litigation at Sanofi

The issues discussed at the Conference focused on:

• The creation of a work team and the distribution of roles (mirroring with the panel? international? lawyer, patent attorney, industrialist? other function, other nationality? etc.)
• On the claimant side: setting the launch date and the timetable (time between filing and service, errors that shift the deadlines, etc.) and on the defendant side: structuring itself to ensure being informed quickly
• The timing of cases (readiness for hearing, preliminary objections, referrals, the question of the UPC vacations)
• The language of the proceedings
• The cost of proceedings compared with French proceedings
• Calculating the amount of dispute (sharing experience from Germany, influence of damages claimed, etc.)
• Identifying all the opposing parties and how to reach them promptly
• How to ensure that the UPC has jurisdiction and check the patent's exemption status
• Effective drafting of summonses (should they be shorter than before the French courts and more comprehensible to a professional?)
• The role of a technical judge
• The seizures before the UPC
• How the decision is delivered (the same day? with arguments?)
• Bifurcation and joined cases
• The definition and purpose of a protective letter, how it is filed and what happens to it

In particular, the Panel gave general advice on the traps to avoid, what mattered most in their respective cases, the use of the CMS and the advantages they noticed over national cases.

Emmanuel Larere and Anne Seibel spoke about their management of the preliminary objection phase, question of inadmissibility, requests for guarantees, referrals, and difficulties encountered with the CMS, and highlighted the UPC's great flexibility on these issues.

They also addressed the issue of deadlines and the adversarial process (e.g. deadline the day before the hearing), while sharing their first experience of a hearing before the Paris Central Division.

This Conference provided an opportunity to learn more about the operational aspects of the UPC and to exchange views with the actors who have experimented with the first practices and will write the first case law, in order to motivate French professionals to take action before the Jurisdiction.