Clause 8: UPC Judge Michael Fleuchaus and Dr. Benjamin Grau on Europe’s New Unified Patent Court

Since the 1970s, European policy makers have dreamed of a common European patent court. That dream finally became a reality last year, in June of 2023, with the formation of the UPC. Most observers predicted that it would not only become the central court for patent enforcement in Europe but also the go-to destination for enforcing patents worldwide.  Since its inception, prospective litigants have understandably wanted to learn as much as possible about how the UPC would operate in practice and whether the dream would match reality.

Fortunately, Judge Fleuchaus – one of the early UPC appointees – and European patent attorney Dr. Grau joined Eli for this special two-part episode of the Clause 8 podcast to discuss the creation, implementation, and role of the UPC from the vantage point of its operation in the first year.

The first part of the show highlights Judge Fleuchaus’ experience as a newly appointed technical qualified judge at the UPC. Judge Fleuchaus discusses the motivations behind the UPC’s establishment and overarching goal to streamline patent litigation across the European Union. He also discusses his role as a technical judge working alongside experienced legally qualified judges and shares the perspective they bring to handling cases together at the UPC.  This segment provides priceless insights about how UPC proceedings differ from patent litigation within and outside of Europe and how litigants can maximize their chances of success at the UPC.

In the latter part of the episode, Dr. Grau provides a distinct viewpoint as a European patent attorney closely observing the UPC. Dr. Grau casts light on the myths and practicalities surrounding opting in or out of the UPC and gives valuable advice on how to leverage the UPC to obtain the best possible patent protection in Europe. Dr. Grau’s perspective is crucial for those interested in understanding the strategic considerations that come into play with the UPC.

Judge Fleuchaus on Familiar Aspects of the UPC

“My response to this would be that it is actually not as unknown as people would think it is because the judges that are now sitting at the UPC, at least the legal judges in the local chambers most of the time, they used to be the most experienced litigation judges, patent litigation judges in the respective countries around Europe. So, if you look at what they did before and how they worked before, and you were happy, say, going in front of a German chamber or an Italian chamber, then you should likewise be happy to bring your case in front of these same chambers in the respective countries. Yes, there will be an additional judge from a different country on the panel, but I doubt strongly that the decision will be less sound than it would have been before in the respective division.”

Judge Fleuchaus’s Advice For UPC Litigants

“My greatest piece of advice would be don’t slack.  The timelines are very short and there is no time for a long wait or a long decision period. I think if the parties will just sit there and wait and hope and maybe try and strategize when they should bring what argument that may actually backfire at some point. I truly believe that it is a virtue to . . . present the case and don’t try to strategize too much.”

Dr. Grau on the Future of the UPC

“The legislation behind the UPC is quite clear that this option of opting out European patents only will exist for a maximum of 14 years. So, the legislators already gave the direction that it will be the court. And, unless people move to national patents, like national German filings or national French patents, it will automatically become the court for European litigation.

This is something one has to acknowledge. [The UPC] is all around Europe. The really experienced litigation judges are within the system. The quality of the decisions together with the speed of decisions will make it a success.”

Dr. Grau on New Strategic Opportunities for Patent Protection in Europe

“Prior to the UPC, we had this concept of prohibition of double protection, so it wasn’t possible to get a European patent and a German one at the same time. Funny enough, for the UPC, it has been changed so you can have a unified European patent with unitary effect and a German patent at the same time.  So, this gives you far more possibilities in building up your portfolio, simply making use of two separate patents directly to the same subject matter, having the choice to end up at different courts. And, I think this will become more significant after these 7 to 14 years grace period where you have the possibility to opt out.”

Highlights

Conversation with Judge Fleuchaus:

0:09:17 Dynamics between technically qualified and legally qualified judges on the UPC

0:15:21 Role of settlements and alternative dispute resolution at the UPC

0:22:07 Advice for effective litigation at the UPC: don’t delay

0:28:04 UPC’s potential as the go-to court for patent litigation

0:28:44 On how UPC Judges are making decisions and ensuring harmony

Conversation with Dr. Grau

0:33:26 Challenges during the initial six months of the UPC

0:34:46 Opt-out option for European patents & surprising low number of patents opting back into the UPC system

0:39:01 Demonstrated effectiveness and efficiency of the UPC

0:49:17 Impact of different prior art rules on patent litigation strategy

0:55:05 Prospects of other countries joining the UPC system