UPC invalidates patent before Germany can decide

As written previously, there has been a long-standing question in the UPC about whether the UPC and national courts can host parallel proceedings on the same cause of action, in respect of the same European patent and the same parties. 

In particular, if a national revocation action concerning one national part of the European patent bundle is started first, must a later UPC revocation action on that bundle have that national part of the patent carved-out?

This question arises because of 'lis pendens' rules in Articles 29 to 32 Brussels Regulation (recast). These are intended to avoid duplicative actions in EU member state courts on the same European patent part and the risk of the conflicting decisions that may result.

In its first decision on the merits, in Abbott v Dexcom, the Paris Local Division of the UPC has held invalid a Dexcom patent that is already subject to pending proceedings in the German Federal Patent Court.

In this case, the revocation action before the German Federal Patent Court, which was filed on 9 May 2023, prior to the counterclaim for revocation in the UPC case, was brought by only one of the defendants in the UPC case (Defendant 8).

The Paris court held that it was therefore not obliged to decline jurisdiction in favour of the first court seized under Article 29(3) Brussels because there was no identity of parties and subject-matter: the parties were different given that the revocation action in Germany concerned only the German part of the patent, and Defendant 8 was the sole claimant. 

The two parallel actions must, however, be considered ‘related actions’ insofar as they both concern the same patent and involve two of the same parties in the present action (Dexcom and Defendant 8). 

In this situation, Article 30(2) Brussels specifies that it is at the discretion of the court seized second to decide whether to decline its jurisdiction in favour of the court first seized. 

In the case at hand, it was clear that the German national court would not give its final decision until after the Paris Local Division of the UPC. Therefore, in light of the principles of efficiency and expeditious decision making set out in the UPC Agreement, the Paris court considered that it would not be in the interests of the proper administration of justice either to decline jurisdiction in favour of the German national court or to stay proceedings pending the decision of the national court. 

As a result, the Paris court ruled on the validity of the entire European patent EP 866, including its German part. 

This decision is important because, providing the parties are not identical, with the speed of UPC proceedings – approximately 11 months to a decision in this case – it is possible for the UPC to overtake slower national proceedings on the same patent.