UPC bifurcation: the dog that didn't bark?

One of the prevailing questions – and concerns – during the many years of preparation of the Unified Patent Court used to be whether local or regional divisions would use their discretion to regularly 'bifurcate' actions. That is, retain infringement proceedings and send revocation proceedings concerning the same patent and the same parties to the central division.

This question arises under Article 33(3) UPCA when infringement actions are filed first and followed (as they must be) by a revocation counterclaim in the same local or regional division.

It has been the settled view for some time now, however, that this may not be a concern after all: the circumstances in which bifurcation might happen are probably limited, and local and regional divisions will generally want to keep infringement and revocation actions together.

The thinking behind this view has now been echoed in a couple of cases, most recently the Local Division of The Hague in Plant e-Knowledge v Arkyne UPC_CFI_239/2023 (16 February), as follows:

"Such a joint hearing of the infringement action and the counterclaim seems to be appropriate in particular for reasons of procedural expediency and avoids the risk of delay that might be involved with bifurcating. It is also preferable because it allows both issues – validity and infringement – to be decided on the basis of a uniform interpretation of the patent by the same panel composed of the same judges. This is also in conformity with the preference of both parties."

(See also the earlier case of Nutricia v Nestle, UPC_CFI_201/2023).

Bifurcation of cases might more commonly occur if a revocation action is filed in the central division first, and the infringement action concerning the same patent and the same parties is later filed in a separate local or regional division. That is, bifurcation from the beginning. 

In these cases, the question that may then be asked by the parties is whether the cases can and should be joined.