Flexible Case Management, Strict Deadlines? The Procedure Before the UPC

In just a few weeks, the UPC will officially start operating. Companies and law firms are eagerly awaiting the first UPC proceedings. This warrants a closer look at what the proceedings before the UPC will look like.

I. First Instance Proceedings Before the UPC

The first-instance procedure before the UPC includes

• the written procedure, which is where the parties exchange their mutual briefs;
• the interim procedure, which follows the written procedure, which serves to prepare the oral procedure and is conducted by a single judge from the panel (the judge-rapporteur);
• the oral procedure, which particularly includes the oral hearing before the entire panel. The oral procedure is conducted by the presiding judge. The parties can present their oral arguments and additional evidence can be collected, e.g. via witness testimony.

The Rules of Procedure provide that the entire first-instance proceedings are to be concluded within one year (cf. Rule 7 of the Preamble to the Rules of Procedure). Plaintiffs can expect a first-instance decision as early as one year after the filing of their action before the UPC.

In order to achieve this ambitious goal, not only the UPC has to work quickly and efficiently. The parties’ submissions are also subject to a strict deadline regime.

II. Typical Sequence of Deadlines Before the UPC

In general, the response to an infringement action will not be limited to briefs on non-infringement, but also entail a nullity counterclaim. In this constellation, the parties’ deadlines before the UPC are as follows:

• After service of the complaint, a three-month response period for the defendant begins. This period applies both to the statement of defense and to nullity counterclaim (cf. Rules 23 and 25 No. 1 of the Rules of Procedure). Submissions concerning the validity of the patent must be made in the form of a nullity counterclaim (cf. Rule 25 No. 1 of the Rules of Procedure).
• The plaintiff may respond to the statement of defense and the nullity counterclaim within two months from the date of service of the statement of defense and to their nullity counterclaim (cf. Rule 29 (a) of the Rules of Procedure).
• The defendant may reply to the plaintiff’s response on the statement of defense and nullity counterclaim within two months (cf. Rule 29 (d) of the Rules of Procedure).
• Finally, the plaintiff has one month to make a final statement on the defendant's nullity counterclaim (cf. Rule 29 (e) of the Rules of Procedure).

The deadline regime before the UPC is thus conceivably tight. Since infringement and nullity proceedings share the same, relatively short deadlines, a strong coordination of infringement and nullity arguments and thus between attorneys-at-law and patent attorneys is required.

III. Possibility of Deadline Extensions – But Also Shortenings

A party’s first request to extend a deadline is generally granted by German courts; further deadline extensions will be considered and granted at least if the opponent agrees. These standards do not equally apply to the UPC. 

For a deadline extension, the Rules of Procedure require a reasoned request. The decision on the request is at the discretion of the court (wording: "may" in Rule 9 No. 3 (a) of the Rules of Procedure). How the UPC will exercise its discretion and whether German precedent for deadline extensions will apply is still unclear.

In addition, the Rules of Procedure also provide for the possibility of a shortening of the deadline under identical requirements (cf. Rule 9 No. 3 (b) of the Rules of Procedure). How the UPC intends to apply this provision is currently also still unknown. In principle, it can be assumed that the UPC will only shorten a deadline in special atypical cases. This is because the UPC is also required to ensure that both parties are sufficiently heard. This requires that both parties receive ample time to respond to the submissions of the other party. Against the background of the already strict deadline regime (cf. II.), there seems to be little room left for a (further) shortening of the deadlines detailed above.

IV. Belated Submissions

The Rules of Procedure only contain rudimentary provisions on how belated submissions are to be dealt with. So what happens if a brief is not submitted to the UPC within the deadline set by the court?

Rule 9 No. 2 of the Rules of Procedure clarifies that the UPC may disregard a belated brief. How the UPC will exercise this discretion and whether (unlike under German law) not only disputed submissions on the facts but also undisputed submissions on the facts and even submissions on the law can be belated, remains to be decided by the UPC. These questions are of great importance, since both undisputed submissions and submissions on the law can have substantial impact on patent disputes.

V. Court’s Discretion in Matters of Deadlines And Belated Submissions

It remains to be seen which guidelines the UPC will develop for the exercise of its discretion in rendering deadlines and dealing with belated submissions.

The UPC aims for a streamlined procedure, which is subject to a strict deadline regime (cf. II.). The discretionary powers granted to the Court – whether in granting deadline extensions (cf. III.) or in deciding on belated submissions (cf. IV.) – should also be understood as a potential corrective to its strict deadline regime. Making use of these discretionary powers may be appropriate where the strict deadline regime of the Rules of Procedure could affect a party’s right to be (equally) heard or where disregarding a belated submission could result in an unjust or factually incorrect decision. 

On the UPC, the authors have already published the following additional articles:

UPC Divisions And Locations: Where Can I File Which Action?

European Patents: Which Cases Can be Brought Before the Unified Patent Court (UPC)?

The Unified Patent Court Goes Live