Thursday, November 20, 2025
Executive Summary
A Berkeley Center for Law & Technology session convened UPC Court of Appeal President Dr. Klaus Grabinski and Paris Local Division Presiding Judge Camille Lignières to address the court’s panel-composition rules, front-loaded written procedure, injunction doctrine, evidence preservation, and the political conditions for UK and Irish accession — with Grabinski confirming that an injunction follows as of course upon a finding of infringement and validity, and that proportionality, not the eBay four-factor test, is the only available check on that default rule.
Instructor(s)
Judge Klaus Grabinski, President of the UPC, member of the Presidium and Presiding Judge of the 1st section of the UPC CoA
Judge Camille Lignieres, President of the Paris Local Division, member of the Presidium
Marc Lauzeral, Schertenleib Avocats
Keywords
UPC injunction doctrine — proportionality as the sole check on default injunctive relief • UPC front-loading procedure — written submissions and strict deadlines • UPC panel composition — local, international, and technically qualified judges • UPC Court of Appeal uniformity — judges’ corner and decision translation policy • UPC order to preserve evidence — saisie-contrefaçon conditions and ex parte standard • UPC damages procedure — separate quantum proceedings and lay-open-books rule • UPC cost recovery — loser-pays principle, ceiling schedule, and security for costs for non-EU parties • Ireland UPC accession — referendum requirement and common law implications • UK UPC re-accession — Brexit withdrawal, CJEU referral condition, political barriers • UPC transitional period 2030 — contracting member states’ renewal decision • “how do UPC judges decide whether to grant an injunction” • “what is the UPC front-loading procedure and written submissions deadline”
Legal Analysis
Panel Composition, Uniformity Mechanisms, and the UPC’s Front-Loaded Written Procedure
The composition of a UPC first-instance panel is governed by a set of rules designed to ensure both local continuity and transnational legal harmonisation. Lignières explained that the chair of every local division panel is always a judge of the nationality of the state in which that division sits, providing stability and institutional familiarity with domestic legal culture, but that the panel is invariably multinational: the President of the Court of First Instance appoints one international judge to each panel, selected on the basis of language capacity in the language of the proceedings and the judge’s current workload in their home division. A technically qualified judge is then allocated by the same President on the judge rapporteur’s request, chosen for expertise in the precise technical field of the patent in suit and screened for conflicts of interest. Grabinski noted that the court employs more than seventy technically qualified judges, all part-time, drawn from three primary sources: national patent judges who continue to sit predominantly in their home courts (a German Bundespatentgericht judge might, for example, allocate 90 percent of working time to the German court and 10 percent to the UPC); patent attorneys in private practice who undergo strict conflict-of-interest vetting and are categorically barred from representing parties in UPC proceedings; and retired EPO Board of Appeal members, retired judges, and select academics. Their technical specialisms span five domains: mechanics, electrics and electronics/computer science, biotechnology, pharmaceutical chemistry, and physics.
Uniformity across a geographically dispersed court system that spans multiple national legal traditions is, as Grabinski acknowledged, the Court of Appeal’s primary institutional function. The Court of Appeal is the sole appellate body for all UPC first-instance decisions, and its role is “clearly to ensure the uniform application of the law” where local, regional, or central divisions have adopted divergent interpretations. Beyond the appellate mechanism, the court maintains uniformity through several supplementary channels: the “judges’ corner,” a regular virtual forum at which non-sitting judges discuss legal questions arising in other divisions; formal judicial training sessions at which judges share and analyse decisions from across the court; and a publication policy under which all significant decisions are made available in English — either because the proceedings were conducted in English or because a translation is provided — ensuring that judges whose native language is not the language of the originating division can access the reasoning. Lignières described the interim conference, held approximately three to four weeks before the oral hearing, as a further instrument of transparency: at that stage the judge rapporteur and the parties’ representatives discuss the principal legal issues the panel has identified as determinative, so that advocacy at the hearing is focused and the parties arrive with advance notice of where the judicial attention is directed.
The procedural architecture underpinning the court’s twelve-month first-instance target is built on strict front-loading. Grabinski characterised the written procedure as the axle on which the entire system turns: “the parties are supposed to submit all facts, all evidence, all requests as early as possible in the proceedings … it is not good enough to file a statement of claim with a few arguments, and then later add on facts, because when they are only introduced at a later point of time during the procedure, they may not be allowed to be considered.” The statement of defence is due three months from service of the statement of claim — the same window within which a defendant must file any counterclaim for revocation — and extension requests are assessed against a strict justification standard; the fact that a deadline falls during a practitioner’s holiday is expressly insufficient. The oral hearing, preceded by a pre-deliberation among the judges on the written record, is structured to resolve only those issues the panel has identified as truly determinative, typically within a single day, with a second day available only in cases of exceptional complexity. Lignières confirmed that the hearing can nonetheless be decisive: “the trial hearing is well prepared in advance, but can be decisive” — a judge’s response to an advocate’s answer at the hearing can shift the panel’s preliminary view on a contested point of law.
UPC Injunction Doctrine, the Proportionality Limit, and Damages and Cost-Recovery Procedure
The UPC’s approach to injunctive relief reflects the civil law tradition that exclusive patent rights, once established through a finding of infringement and validity, carry an inherent entitlement to exclusionary remedy. Grabinski articulated the governing principle with precision: when a court finds infringement and the patent valid, “it is one consequence also under the UPC agreement that an injunction may be granted.” He distinguished this from the position in the United States following eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), which introduced an equitable four-factor balancing test that has no counterpart in continental European law. The European equivalent of the eBay constraint is the proportionality principle — but Grabinski was explicit that this operates very differently in practice: the burden falls on the defendant to affirmatively demonstrate why an injunction would be disproportionate, a burden that he noted is “not very often” discharged successfully and that, when invoked, “was not always, or what’s rare — really successful.” The principal carved-out domain where the proportionality analysis carries more weight is standard essential patent litigation subject to FRAND licensing obligations, where Grabinski noted the court applies the guidance established in Huawei Technologies Co. Ltd. v. ZTE Corp., Case C-170/13 (Court of Justice of the European Union, July 16, 2015).
Damages at the UPC are procedurally decoupled from liability: they are determined in a separate proceeding that follows the final decision on the merits or, in PI proceedings, the final PI order. Lignières described the rules governing that separate quantum phase as including a “lay open books” mechanism, under which the winning party may compel the losing party to produce documents disclosing turnover and profits attributable to the infringement — a targeted form of financial disclosure that replaces the open-ended discovery familiar to US practitioners. An interim award on damages may be requested at the merits stage before the separate quantum proceeding commences. Lignières observed that in practice, once the merits decision is issued and the parties know the outcome, “in a majority of our cases parties find an agreement on the amount of damages,” making the formal quantum proceeding the exception rather than the rule. The court also acknowledged the growing significance of US parties in its caseload: Lignières reported that in the Paris Local Division, US companies appear in approximately 50 percent of all cases and are the claimant in 70 percent of those US-party cases — figures that underscore the degree to which the UPC has already become part of the standard US patent enforcement toolkit.
Cost recovery at the UPC follows a structured loser-pays regime, with the losing party obligated to reimburse the winning party’s legal fees subject to a published ceiling calibrated to the value of the action. Lignières confirmed that an interim costs award is typically made at the time of the merits decision or final PI order, with the party that prevailed able to return for a supplementary costs application thereafter; the ceiling is set in advance by administrative decision, providing predictability from the outset. Invoice detail is not typically required in full; what matters is that the total claimed is “reasonable and proportionate.” On the related security-for-costs mechanism, Lignières noted the emergence of “consistent case law” requiring non-EU parties — including US companies — to provide a deposit into the UPC’s account or a bank guarantee from an EU bank, rather than a US bank, as the acceptable form of security. Grabinski separately addressed the court’s most significant pending institutional improvement: a new case management system, launched approximately one to two months before the panel date, is expected to improve access, data quality, and system reliability for users, resolving some of the transparency deficits that practitioners and commentators had identified in earlier sessions.
Evidence Preservation Orders, Ireland’s Accession and the Common Law Question, UK Re-Accession Conditions, and the Transitional Period Decision
The UPC’s evidence preservation order — the procedural analogue to the French saisie-contrefaçon — is available on a relatively accessible threshold, deliberately calibrated below the standard applicable to a preliminary injunction. Lignières set out the three-part test: the applicant must hold rights in a valid patent at the time of filing (meaning, for instance, that an opposition pending before the EPO does not per se defeat the application); it must have supplied reasonable evidence that the patent’s main claims are being infringed; and it must demonstrate that the order is necessary to gather evidence for proving infringement in the merits proceedings. The court may issue the order ex parte — without notice to the defendant — where there is a risk of evidence destruction, and Lignières confirmed that the element of surprise is available as a tool for claimants: “the claimant can have the surprise effect for the defendant at the time of the” inspection. On the role of expert evidence in proceedings, Lignières was direct: written expert opinions are routinely submitted, but live expert examination and cross-examination at the oral hearing is “really rare” because the technically qualified judge on every panel supplies the scientific competence that an independent court-appointed expert would otherwise provide.
The question of UK re-accession to the UPC — raised by practitioners throughout the conference on account of the BSH Hausgeräte GmbH v. Electrolux AB, Case C-339/22 (CJEU 2025) line of authority extending effective UPC jurisdiction to non-member states — elicited from Grabinski a historically rich but constitutionally precise response. He noted that the UK was “a very important player” in drafting the UPC Agreement and its Rules of Procedure, and that after the Brexit referendum the UK government initially resolved to ratify the Agreement anyway, on the basis that the prevailing legal view held UPC membership to be compatible with leaving the EU; that decision was subsequently reversed when a new government withdrew from ratification, although the UK remains a signatory state. Grabinski identified one non-negotiable precondition for any future accession: the UPC must be able to apply EU law when EU law is applicable, and where an EU law question is unclear and unresolved by the Court of Justice of the European Union, the UPC must be able to make a preliminary reference to the CJEU. Whether that condition is politically acceptable to any future UK government is, Grabinski observed, “for the future,” but he characterised it as “rather clear” as a matter of European legal architecture.
Ireland’s accession to the UPC presents a legally simpler but politically contingent path. Grabinski confirmed that as an EU member state Ireland is eligible and has been invited to join, and that both the Irish government and relevant stakeholders are “in principle” supportive, but that the Irish Constitution requires a referendum on the question of joining an international court with exclusive jurisdiction — and that a referendum held in a different political context in the preceding year had failed, making the timing of an Irish UPC referendum uncertain. Grabinski predicted that Irish accession would be significant not because it should alter the substantive uniformity of UPC law, but because a common law division staffed by Irish judges would introduce, within the bounds of judicial discretion, “a little bit of local flavor,” potentially including more receptive treatment of expert evidence and the Rule 190 specific-disclosure mechanism. On the transitional period, Grabinski was equally measured: the decision whether to extend the period beyond its current 2030 end-date rests with the contracting member states, who will assess the maturity and reliability of the UPC’s case law at that point; the roughly one-third of newly granted European patents that already carry unitary patent status have opted out of the transitional regime entirely, and for that growing cohort the UPC already exercises exclusive jurisdiction as a structural matter, regardless of the political decision on extension.
Generated by AI based on the Interview/Transcript below.
Key Takeaways
- Injunction Is the Default, Proportionality the Only Check: Grabinski confirmed that upon findings of infringement and validity an injunction “may be granted” as a matter of course, with proportionality — not the eBay four-factor test — as the only available challenge, and that defendants invoking proportionality have “not very often” succeeded.
- Front-Loading Is Strictly Enforced: Grabinski confirmed that facts and evidence not submitted in the initial written phases “may not be allowed to be considered” later in the proceedings, and that extension requests require genuine justification — a practitioner’s holiday schedule being expressly insufficient.
- Oral Hearing Can Shift a Pre-Formed View: Despite the panel’s pre-deliberation the day before the hearing, Lignières confirmed that the oral hearing “can be decisive” — the judges “can change our mind” in response to advocate submissions on contested legal issues, making oral advocacy substantively consequential.
- US Companies Are 50% of Paris Caseload: Lignières reported that US parties appear in approximately 50 percent of Paris Local Division cases and are the claimant in 70 percent of those cases, demonstrating that US patent owners have already integrated the UPC into standard enforcement strategy.
- Evidence Preservation Threshold Is Low: The standard for obtaining an ex parte saisie-type order is materially lower than for a preliminary injunction — requiring only a valid patent and “reasonable evidence” of infringement — and the court will issue the order without notice where evidence destruction is risked.
- FRAND/SEP Cases Follow Huawei v. ZTE: Grabinski identified standard essential patent and FRAND licensing disputes as the principal category in which proportionality arguments against injunctive relief carry weight, with the court applying the framework established in Huawei Technologies Co. Ltd. v. ZTE Corp., Case C-170/13 (CJEU 2015).
- Damages Are Decoupled From Liability: Damages quantum is determined in a separate proceeding after the merits decision, with a lay-open-books mechanism compelling production of the infringer’s turnover and profit data, though Lignières noted that “in a majority of our cases parties find an agreement on the amount of damages” before the formal quantum phase.
- Ireland Requires a Referendum; UK Requires CJEU Referral Acceptance: Grabinski confirmed that Ireland’s accession is constitutionally conditioned on a successful referendum — timing uncertain — and that UK re-accession would require acceptance that the UPC must refer unresolved EU law questions to the CJEU, a condition he characterised as “rather clear” and non-negotiable.
- Transitional Period Decision Rests With Member States: Grabinski confirmed that the 2030 transitional period renewal decision belongs to the contracting member states and will depend on whether the UPC has by then achieved sufficient case-law maturity and user confidence to make the parallel national-court option unnecessary.
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Interview/Transcript
This transcript was based on a conversation on December 4, 2025 at the 2025 Berkeley-GW UPC Institute. This panel on “A Discussion with UPC Judges” was given by Judge Klaus Grabinski, President of the UPC, member of the Presidium and Presiding Judge of the 1st section of the UPC CoA, and Judge Camille Lignieres, President of the Paris Local Division, member of the Presidium, and moderated by Marc Lauzeral, Schertenleib Avocats.
Marc Lauzeral 00:19
Thank you very much for your time and your energy to be here. I know we, you have a lot of, a lot of work sometime because of us, but so let me quickly introduce you, Judge Grabinski, Dr. Klaus Grabinski, President of the Court of Appeal of the UPC, and Chairperson of the Presidium of the Unified Patent Court since November 2022 before he served on the German Federal Court of the Justice 10 civil decision that has entirely had jurisdiction on patent litigation matters, including as a deputy presiding justice of the division prior to joining the German federal court of justice in 2009 he had a number of judicial roles included as a presiding judge of the patent litigation division at the Dusseldorf Regional Court and as a judge at the Dusseldorf IO Regional Court. He was an external legally qualified judge, extended legally qualified member of the Enlarged Board of Appeal of the EPO. Judge Lignieres is currently a legally qualified judge at the UPC Paris Local Division. She is the presiding judge of the Paris Local Division, and she’s a member of the Presidium of the UPC. Camille Linear joined the judiciary in 1994 where she was in charge of civil commercial and enforcement matter for more than 19 years. In 2013 she joined the Paris Court of First Astents in a chamber specializing in intellectual property law with exclusive jurisdiction for patent law matter where she shared a presiding judge of the panel in 2019 she was appointed to the Paris Court of Appeal in the Economic Law Chamber in charge of competition and distribution law disputes. So I’m going to ask you some questions, and then at the end of the panel, the audience will have the opportunity to raise some question as well. The first thing we’re going to talk about is value selection. We know that US patent law practitioner loves value selection. So, Judge Lignieres, how are the judges of the panel chosen? Either a way to know and or influence the designation of judges.
Judge Lignieres 02:40
Thank you. Thank you for your question. Good afternoon to everybody. First of all, I would like to say that I’m really pleased to be with you today in DC. It reminds me of good memories when I used to live with my family in DC 20 years ago in Depunce Circle area, so close to your location there, and I was invited by the Law Department of George Washington University to give a presentation on the French judicial system during the lunch break of the professors at law, and who had warmly welcomed me, so to come back to your question, how the judges of the panel chosen concerning the first instance division. The panel of each division is composed of one or two local legal judges and the president of the court of first sentence allocates one international judge to the concerned panel for each case, so the chair of the panel is always a judge of the nationality of the country where the local division is located, so it ensures stability in this local division, but the panel is always multinational, which ensures harmonization of case law throughout the UPC, the international judge is chosen according several criteria. The first is his ability to work in the language of the proceedings, you know that there are several language official language before the UPC, and also according to this own workload in his own division, finally upon the judge reporter request, so the judge reporter is the judge in charge of the case management of the case, a technical judge is allocated to the. One to the panel, and the choice of this technical judge is made by the President of the Court of First Incense, taking into account first the expertise of this judge in the particular technical field, according to the patent in suit, and second, the absence of any conflict of interest, but the main principle when the president to choose the members of the panel, so local judges, an international judges, judge, and a technical judge.
Speaker 2 05:46
Thank you, Judge Grabinski, how do you ensure uniformity and communication among the judges of the court?
Judge Grabinski 05:56
Good afternoon, everyone. It’s a pleasure joining you in Washington, DC, like Judge Linea, I love coming to Washington, DC, but this time I only can join you virtually. I hope we still will have a wonderful afternoon. So, yes, how to ensure in uniformity and communication among the judges of the court. This question has different aspects, of course. I’m the president of the Court of Appeal of the UPC, and there are certain local divisions. There’s one regional division, so division that is shared by a number of member states, and then there’s the central division, and they all are the form the court of first instance, but there’s only one court of appeal, and the function of the court of appeal is clearly to ensure the uniform application of the law that is to be applied by the UPC, so it is primarily the Court of Appeal who decides on questions how to interpret the law, in particular, also in situations when local or regional or central division may have different views on how to interpret the law, but this is just one aspect. There are more than this. The judges come from different European countries, but they are all now together, and they are supposed to not to apply the national law any longer, but the law that is applied by the UPC, and one way to make sure that this is going to happen is the international composition of the panels, like already explained by Judge Linear, the panels are composed of by of judges that coming from different contracting member states, and so they come together and take us to have to decide the case on the on the uniform law that is to be applied by the UPC, so that is one way to have these international panels, and then the judges that are not from the from the panel or from the division where the case is decided, they go back to their own division, and then they, they, they share this views, they also, from time to time, meet virtually, discuss legal questions, that is called the judge’s corner, so that’s another way to, to, to make a uniform application of the law happen, and the court also organizes trainings for the judges, where they meet, they discuss legal issues, they get informed about decisions from other divisions, and that is brings me to another, another aspect that is important, that is, of course. Well, our product, the product that comes out of a court, are decisions and orders, and these decisions and orders are published on the UPC website, and we, as a court, we try to make sure it is not the case in each and every case, but with regard to the important decisions, that’s true, that all the decisions are available in English, be it because the language of the proceedings is anyway English, but also in case the language of proceeding is another language and. Than in English, that then there is a translation available, so that all the judges, even if they speak different languages, at least by reading the decisions for the translations in English, become aware of what their colleagues in the other division decided,
Marc Lauzeral 10:22
thank you. It’s proved what we discussed this morning about the will of the court to provide predictability to the user of the courts. We also discussed a lot this morning about injunction and damages, which can be sometimes challenged to have in the US, so the UPC, the UPC agreement provide for damages calculation. Judge Lignieres, how do you substantiate damages claim? Are there discovery proceedings? Is it large, like in the US, or narrow and limited to some specific document?
Judge Lignieres 11:00
Well, usually before the UPC courts, the damages are claimed in a separate procedure after the insurance of the decision on the merit or a final order concerning preliminary injunction. It is also possible for the parties to ask for an interim award at the stage of the first procedure, at the stage of the final decision. In fact, we have in the UPC rules of procedure the possibility to request to lay open books of the losing party, so the winning party can access documents relating to turnover and profits generated by the infringement, so before the UPC, no need for a discovery proceedings, and to conclude I would say that in a majority of our cases parties find an agreement on the amount of damages after the decision on the merits when they know the outcome.
Marc Lauzeral 12:17
Thank you. Thank you very much. So we discussed this morning the difficulty for us quote to issue injunction. So, Judge Grabinski, what is your position on the injunction? Would you say that the UPC is willing to issue one, or that injunction are an exception?
Judge Grabinski 12:38
The principle ID idea that is taken in Europe is that patents, like other IP laws, are exclusive, give exclusive rights to their owners, and when this right court finds that this right has been infringed, and the court also finds that the patent is valid. So her occasion action was not successful in that situation. It is one consequence also under the UPC agreement that an injunction may be granted. I’m aware that in the US, following the eBay decision of the Supreme Court, the landscape, but which was more or less the situation, like I mentioned, for Europe was more or less the same in the US, but since eBay it had changed, that is also part of the concept of common law and the concept of equity law, which is not as such known, at least not in the on the continent in Europe. The in Europe, the concept that would be could be considered to be to some extent an equivalent to to eBay is the principle of proportionality, however, there it has to be said that in principle the party who evokes proportionality, so the defendant in the Frenchman case must give arguments why the issuance of an injunction is disproportionate, and we’ve seen this in the, in the, in practice not very often, and when it was noticed, it was not always, or what’s rare. Really successful, there are some exceptional situations, of course, on which I do not want to touch in detail, but the situation that there is a friend license or standard essential pattern and friend license is a very particular one, so I’m not touching upon this, but there, of course, we have the guidance from the Huawei City decision from the European Court of Justice.
Marc Lauzeral 15:32
Thank you. We also discussed this morning the possibility for the cost award from the losing party to the winning party, this cost award being capped by a telling published online, so Judge Lignieres, do you consider the cost recovery automatic, and should it be substantiated?
Judge Lignieres 15:53
Well, the principle set in in the UPC rule is that the losing party must reimburse the winning party for the cost it incurred in the proceedings, so it’s a principle, and a provisional sum as an interim award is often awarded at the time of the decision on the merits or at the time of the final order for preliminary injunction, sometimes parties agree on a reasonable amount regarding the case at hand. In most cases, representatives provide an invoice regarding their legal fees, but this invoice is not really detailed, but we have the total of the legal fees in principle, and if this amount is reasonable and proportionate, the court will order the unsuccessful party to pay the fees incurred by the successful party in the case, so the party that won the case may, after the decision of the merits, return to the panel to request additional costs in separate proceedings after the decision on the merits or the final order for PI, and an additional sum could be granted for the cost, but this amount is limited by a ceiling already known. It’s set in administrative decision and is set according to the value of the action, so the parties have an idea at the at the early beginning of the proceeding of the of the action about the amount of the legal thief incurred in the case.
Marc Lauzeral 18:02
Thank you, Judge Grabinski, what are the main features that’s essential to UPC proceedings? According to you,
Judge Grabinski 18:12
UPC proceedings are, have two, three, sorry, three, three phases, so it’s the written procedure. It is followed by the interim procedure, and then by the oral procedure, and what is main characteristic is already the written procedure, which is very important, because the parties are supposed to submit all facts, all evidence, all requests as early as possible in the proceedings, so it is not good enough to file a statement of claim with a few arguments, and then later, or a few facts, and then later add on facts, because when they are only introduced at a later point of time during the procedure, they may not be allowed to be considered in the procedure, so it is what is sometimes described as a front loading procedure. This applies to the claimant, but also to the defendant, and that is one way, or one important means to make sure that the procedure is on average will be finished in the first instance proceedings within one year time, that is of course appreciated that proceedings don’t take two three years, but just one year on average. And one main way to do this is this really strict principle of written procedure that all the facts, all the evidence have to submit it as early as possible. The second means to make sure that the procedure, on average, is done very far fast is other strict deadlines of the procedure, so the deadline for the filing the statement of defense once the statement of claim and infringement action has been brought is as from the day of service of the statement of claim is three months, and by the same time also, if defendant in the infringement action likes to bring this, it’s time to file a counterclaim for revocation, so it’s a rather tough deadline, but I said the idea is to streamline the procedure, so to get this done in a rather short period of time, another feature feature, or maybe even when I talk about the timelines, of course, when the text, the case is extraordinarily complicated, then it is always possible to extend the timelines, but, but that really needs justification to extend the timelines. It is not just done for reasons like, okay, sorry, we, the end of the timeline is falls into my holidays, so that would not be accepted as a reason for extension. And one more characteristic is also the interim procedure, which has two aims. First of all, the judge, if there are some indications, may try to settle the case, or in as of next year, mid of next year, there will be a mediation and arbitration center, so if there’s an interest from from the parties to get to try to get the case settled by arbitration or mediation, that would also be the right time to do this, so that is one part of the interim conference or procedure, but the second part is to prepare the oral hearing, so do all the necessary preparation for the oral hearing, and then the aim is to have the oral hearing done in one day, when it’s very complicated, it can be two days, but normally that should be done in one day, and after the hearing, then it takes a few more weeks to issue the decision, but then you, in an average case, the parties have a court first instance decision, and I think so. The rapidity of the of the case of the procedure, and the tools I described, these are, to my understanding main features and essentialities of UPC procedure.
Marc Lauzeral 23:28
Thank you, Judge Lignieres. Would the US nationality of a party impact the outcome of a decision?
Judge Lignieres 23:38
First of all, I would like to draw your attention to the fact that already the US companies are often involved in the UPC cases, to give you an idea, in my division, in the Paris Local Division, in around 50% of our cases, the parties are US companies, and in, in 70% of these cases, the US companies are claimants in the, in the infringement action, and so I see only two specific impacts of being a US party in a UPC case. First, concerning the language of the proceedings, and second, the security for focus to go to guarantee the legal fees. First, the language of the proceeding in general it will be English, except if the US party is involved as defendant in a case where the patent is in German or in French, for example, but in general it will be English. Second, concerning the security costs, in the case of a request of security costs, there is now a consistent case law that tends to ask a party outside of the EU to make a deposit on the UPC account or a bank guarantee in an EU bank rather than in a US bank. It’s always done without.
Marc Lauzeral 25:36
Thank you, Judge Grabinski. What are the main areas of improvement of the UPC?
Judge Grabinski 25:42
Could you explain a bit the question, what is the
Marc Lauzeral 25:49
main areas of improvement? Where do you consider that you, the UPC, could
Speaker 2 25:54
we could do better?
Marc Lauzeral 25:55
Exactly.
Judge Grabinski 25:56
Okay. Okay. Good. Maybe there’s one good news in this context is more tech of technical nature. The UPC introduced a new case management system just one month ago, or two months ago, that will help users to exceed the the system in a good way, and you have to understand that the court is an e chord, and so that is a quite important aspect for for for the UPC, yes, the main task that lies ahead for for the for the UPC is clearly to develop a stable and reliable case law, and we are already working on this. A lot of decisions have already been issued, and you will see step by step, the Court of Appeal will develop a case law in the regarding the essential questions of substantial patent law, as well as procedural law, and but of course, this needs time, and it needs the respective cases, but this is not different from any other court in this world that the cases come and then they are given the court the opportunity also to develop certain legal interpretation of the law, and thereby this help the users of the system in general to better understand and to have a more or have a clear idea how the law is going to be practiced also in the future.
Marc Lauzeral 28:12
Thank you, Judge Grabinski. I would follow, follow up on a question regard on the conduct of proceedings, as you mentioned, proceedings, you have a written part and an oral part. How do you weigh the importance of the trial hearing and advocacy? Do you think that written proceedings have the same weight as the advocacy?
Judge Grabinski 28:31
Yes, absolutely. In the UPC system, the written proceedings are very important, they set the scene, the facts have all the facts have to be in the written submissions by the parties, and they are the clear basis for for the oral hearing. The judges, how do they work? Well, we have the so-called judge rapporteur, that’s the judge who does the case management up to the to the oral hearing, and and prior to the oral hearing, at least to my understanding, at least in most of the division, that’s the case, the judges, after having read the written submissions, and they read the written submissions. I can assure you, they come together and pre-deliberate the case and form already a preliminary view on the case, and on that basis then they they come to the oral hearing and then the oral hearing is has as a main purpose to to to discuss the the. Issues that at the end of the day will be the decisive one for the case, so the judges, one of the judges may, and in most cases does give an introductory remark, so kind of focus focusing the debate on the issues the panel thinks are the decisive one for the case, and that then allows to discuss the issues with the parties in the oral hearing, which normally is works the same way, like the the written submissions that each of the parties has twice the possibility to to argue their case, so like in the written procedure it starts with a statement of claim, response, reply, rejoinder, you have the same system at least in many divisions that the claimant gets a slot to plead the case, then you have the defendant to reply, and then you have another round of pleadings, and the judges, they can take an active role in the hearings by asking questions to the party representatives, and possibly also to party experts in the room if needed.
Marc Lauzeral 31:39
Thank you, Judge Lignieres from a local division point of view. How do you organize trial hearings? Do you discuss the case and make a decision before the trial hearing, like a preliminary opinion, or do you want to arrive without bias before the trial hearing?
Judge Lignieres 31:58
Well, at the start, before the trial hearing, the representative already know what the panel considers to be the most important legal issues for the coming decision, because at the stage of the interim conference we discussed with the judge reporter and the representative, and it’s about three weeks or one month before the hearing about the main legal issues, so the hearing is very well prepared in a dance, it’s very well structured with a time frame, but we don’t, we don’t know the outcome at this stage. The judges of the panel have a pre meeting wrong the day before the hearing, they discuss about about the case, but the hearing, the trial hearing, can be very decisive in cases of doubt amongst the judges on certain points of law, and the answers to question, as President Gravinsky, we have the habit to ask for question on specific legal issues during the hearing, and it can be the response from the lawyers, can be, can be sometimes decisive, and we can change our mind, so the trial hearing is well prepared in advance, but can be decisive.
Marc Lauzeral 33:50
Thank you. And we discussed this morning the possibility of obtaining an order to preserve evidence. It’s kind of downright, what would you need? What would a patentee need to bring to the court to obtain an order to preserve evidence, Judge Lignieres
Judge Lignieres 34:06
so to obtain an order to preserve evidence, the conditions are simple. They are the following: first, the applicant is entitled to the rights of a valid patent at the time of the filing, that means, for example, there is no opposition pending before the EPO concerning the patent ensuite. Second, the applicant has sufficiently provided at this stage reasonable evidence to support that the main claims of its patent have been infringed. Third, the applicant needs an order to gather more evidence for the purpose of proving the late infringement, and the UPC can issue also an urgent order if there is a risk of destruction of evidence. Without hearing the defendant, so ex parte, and so the claimant can have the surprise effect for the defendant at the time of the CD measures, so the standard of evidence required at the Court of Appeal, as already stated, is not very high, much lower from the BI, for example, since it is because the claimant does not have enough evidence to bring an action on the merit that they request the inspection of the premises, so often before the start of the proceedings on the merits, and this measure law an application, the applicant to gather evidence is in support of their of their claim, so it’s a very, very useful tool that you can use as a claimant, to be sure that you have enough evidence to bring when you are coming for an infringement action on the merits.
Marc Lauzeral 36:14
Thank you. What is the role of experts in the proceedings? Would you consider examination and cross examination, if so, would it be the key evidence of the trial.
Judge Lignieres 36:27
Well, the proceeding before the UPC, as you have already understood, are essentially written. Each party often submits a written expert opinion, and the presence of a technical expert, it’s not really, it’s really rare, because we have at our side in the panel, as you understood, the technical judge with an expert in this in this field, so it’s really rare when, when we will have the necessity to appoint an expert view to the presence of this technical judge in the panel, so therefore there is no cross examination at the oral hearing, and this oral hearing, as President Grabiski already explained last as a standard crisis only one day.
Marc Lauzeral 37:28
Thank you, Judge Lignieres. Judge Grabinski, some people are pushing for the UK to join the UPC, notably due to the fact that UPC is issuing injunction covering UK territories. What are your views on this subject?
Judge Grabinski 37:43
Well, thank you. That’s a bit of political question, but thank you anyway. For the question, let me first mention that the agreement and the rules, as we find them right now, are the product of collaboration between a number of states and judges and lawyers from these states, and UK played a very prominent role in in the development of these of the sort of the legal framework of the UPC because it all dates back to the time when before Brexit took place and during the time UK was indeed a very important player on that level, and when you look at the agreement, the rules of procedure, you find a lot of things that you are quite familiar with when you have a common law background, and I also, on a personal note, I was, I had a lot of respect, and it was always very good to work together. I was a member of the drafting committee of the rules of procedure to work together with a lawyer from the UK and the lawyer and the judge from the UK, and I learned a lot about how it works in the common law system in the UK, so it was very much to my regret that the UK first, this was not to my regret, first after the Brexit referendum, the UK at the time decided to anyway ratify the UPC agreement, so after the Brexit referendum, and so there was already at the time a discussion whether this is possible for the UK, having at the same time the target to leave the EU, but it was considered to be possible. All this, this was the majority view to stay in the UPC, even after a Brexit, but then a few, one, two years later, the government changed, and the new government decided to withdraw from the from the ratification, but just as a side remark, the UK is still a signatory state of the UPC agreement. Having said this, at the moment it is, of course, politically it is not a topic that is discussed on the political level, whether this is going to happen in the future, that remains to be seen, and but I, I would think that from the from the European side there is at least one condition that clearly has to be met, and that is that the UPC has to apply union law when there is union law to be applied. By the way, patent law, to a large extent, is not union law. It is dealt with by the, in the UPC agreement, but not dealt with by union law, but when union law is to be applied, union law has to be applied, and if there is a question, How to interpret union law that is relevant for deciding the case, which is not clear and has not been clarified by decision of the European Court of Justice, then the UPC will have to make referral to the to the European Court of Justice, and that will not change, that is, that I think is rather clear, and whether this is one day in the future acceptable to other European states, that again remains to be seen.
Marc Lauzeral 42:05
Thank you. And to go on, on political question, do you think that the entry of Ireland in the UPC is expected, and if so, would you expect it to influence the future of the courts for a more common law approach, with, for instance, more weight on the expert and longer trial hearing.
Judge Grabinski 42:24
Yeah, well, indeed, Ireland is a member state of the European Union, and all member states of the European Union that have not yet joined the UPC are invited to join the UPC. There’s also, by the way, was mentioned in the drug report, you know, the former president of the European Central Bank, and in order to increase the competitiveness of the European Union, so yes, Ireland, the door is open for Ireland to join, and to my understanding, the Irish government, but also positions of the Irish parties, in principle, would like to join the UP UPC, however, there is a requirement under the Irish Constitution that a referendum must be held, and last year, in a very different matter, a referendum failed, and and one has to wait when the Irish government will see the right moment to bring this question to the Irish people, whether they support Ireland to join the UPC or not, and once Ireland is in, of course, it will be the first contracting member states that has a common law background, and that, of course, will be very interesting, because I’m absolutely sure that also the other Member States and judges coming from other Member States, so having a continental law background for the court if high-rich judges will join the court, and what this then at the end of the day, of course, it’s a unified accord, and it should not be different at different places, but there’s, of course, always discretion, and there is always a bit of a local flavor, if I may say so, so it is not, should not be too much, but a little bit is possible, and of course. That also, then, would be true for, for, for a local division, if this is going to happen, located in Ireland.
Marc Lauzeral 45:08
Thank you. And, as a final question, so on june 1, 2023 UPC was launched. We are now during the period of transitional period, where you have a cohabitation of the UPC and national courts for seven years, so who will decide to renew or not to renew the transitional period, and would you already have a hint of such renewal?
Judge Grabinski 45:32
Well, for it will be decided by the contracting member states, and but of course, before there will be a report on this. There will be discussion also with the Presidium of of the of the UPC, whether there is a need to extend the transitional period or whether the transitional period should come to an end after seven years, that is, of course, a political decision. At the end, it’s about the contracting member states to be decided, but I, I’m sure one criteria that, which is also, of course, was the reason why there is this transitional period with the, as you said, the cohabitation between between national courts and the UPC, meaning that for classical European patents that have not been opting out, the claimant can choose where to bring the case, whether in the national court or whether in the UPC, so that concept was was established, was implemented in order to to to allow patent owners to to to gain confidence in the new court, and to see, does it work, does it not work, and if it will not work if they don’t have confidence, they still can use the old system, and it will be after seven years or possibly before to be decided whether the UPC has already reached the maturity that this is no longer needed, that it is already a stable institution with a stable case law and reliable system, and then there is no alternative needed any longer, and well, you look at the development of the of the cases, decisions coming out of the court, that getting more and more, allowing users to get a clearer view on how the agreement and the rules are going to be applied, that at least could be an indication on how this will be decided in seven years time, and still we only in year two, so between two year two and year three, so we will still have some time to further develop the case law and further gain confidence from users, and then we will see whether what member states, how they think about it, whether there’s still a need after seven years for having this parallel system, or then all the European, all the European patents litigation about European patents can only be decided by the by the by the UPC, by the way, let me also mention those that now applied for unitary patent, and this, this is about a third now of all patent of all granted patents and they already decided against a transitional period, and only for the UPC, because the unitary pattern litigation concerning unitary pattern can only be brought in front of the UPC.
Marc Lauzeral 49:19
Thank you. I know we’re a bit short of time, but maybe if some people, we can take a couple of minutes. It’s if some people from the audience ask questions. John, I see you’re going to take the mic.
Audience 49:34
Thank you for the thank you for the judges appearing here today, given I guess it’s their evening, so we appreciate it. It’s been very informative. You talked about the technical judges that are assigned. How many overall are there? Is it, you know, 2050, 100 and is it their full-time job, or is this just. Is part of what they do,
Judge Grabinski 50:02
yeah, it’s more than 70, and it is, they are all part-time, and they come from very different backgrounds, so some of them are technically qualified judges in their countries, so for example, Sweden, Germany, they know technically qualified judges in their national systems, and, and we, some of our technically qualified judges come from their ranks, meaning, for example, that the judge that comes from the German Bundespartan, Greek works 90% still with the German with the German court, but 10% with the UPC, so that is one source for for technically qualified judges. Another source is our patent attorneys, so patent attorneys that are in private practice, and then of course, particularly with this group, the issue comes up about conflict of interest, and in that regard, what is always done before a judge is assigned to a case, they do a conflict of interest check, more or less what a patent attorney has to do all the time when new client appears, knocks at the door, and and asked her, ‘Do you want to represent me in this case? Then the first thing, the patent attorney, like any lawyer, what they have to do is to do a conflict of interest check, and the same is true for the technically qualified judges, and and there’s another thing that should be mentioned, when you are a tech appointed a technically qualified judge in the UPC, you cannot represent the case in the UPC, so it is not possible that on Monday you are a TQ J in a case and then without any relation as to the parties on Friday, you are a represent the case in the UPC, so that even if there is no such conflict of interest, this is impossible. So technical for judges can never represent the case in the UPC. And then the third group, whether from where the TQJS come from, are retired from for example, members of the EPO Board of Appeal can also be very few professors different kinds of retired persons, but still very much able to handle cases, and yeah, so that is essentially where the technically qualified judges come from, and then, of course, yes, that I wanted to mention as well, they have essentially five backgrounds, so they are either have a mechanic, a background in mechanics, in electrics, which also covers like any kind of electronics, computer science, and so on. They can have a biotech background, they can have a pharmaceutical chemical background, or they come from physics.
Marc Lauzeral 53:30
Thank you. Does anyone else additional questions now? So, thank you. Thank you. Thank you very much for for your time, your energy, and your comprehensive answers, and and I hope we will see you next year, maybe in the next UPC day. Thank you very much.
Judge Grabinski 53:53
Okay, thank you. So have a nice afternoon.
Judge Lignieres 53:58
Thank you, thank you.