Efficiency is paramount
The Rules of Procedure (“RoP”) preamble states:
…proceedings shall be conducted in a way which will normally allow the final oral hearing on the issues of infringement and validity at first instance to take place within one year whilst recognising that complex actions may require more time and procedural steps and simple actions less time and fewer procedural steps.
The UPC’s animating premise is speed with discipline. The Preamble to the RoP sets the tempo: first instance infringement and validity should ordinarily reach a final oral hearing within one year, with elasticity only for the truly complex or the truly simple. The Court has taken that mandate seriously. In construing and applying the RoP, panels have shown little patience for tactical drift or iterative pleading. Amendments to a party’s case are the exception, not the rule: unless the proponent can demonstrate that the change could not, with reasonable diligence, have been made earlier, and that the other side will not be unfairly hindered, leave will be refused. The one day hearing norm for ordinary patent cases underscores the same ethos. Parties should expect to try their case in a concentrated sitting, not a rolling sequence of mini hearings.
That procedural intensity is enabled by a front loaded architecture. The written procedure obliges each side to put its full case forward early, on short, pre set timetables. In infringement actions without a revocation counterclaim, and in standalone revocation actions, the written phase is designed to close six months from service of the statement of claim. If infringement meets a validity counterclaim, the schedule stretches modestly: eight months from service, or nine if claim amendment is sought. The window for preliminary challenges is similarly tight. A defendant wishing to contest formal deficiencies must file any preliminary objection within one month of service, before lodging its statement of defence. In practice, that means jurisdictional, language, opt out, service and representation issues must be identified and briefed immediately, or risk being overtaken by the merits timetable.
Active case management is the third pillar. Judges are intervening early to define the issues that actually need deciding, to sequence them for efficient resolution, and to set (and enforce) timetables that keep cases moving. Where appropriate, multiple aspects are dealt with on the same occasion; personal attendance is dispensed with when unnecessary; and available technology is used to reduce expenses without sacrificing fairness. Directions are calibrated to ensure the hearing proceeds swiftly and with focus. The cumulative effect is a forum that rewards preparation.
Counterclaim and bifurcation
In case of an action for infringement, a counterclaim for revocation may be brought asserting the patent is invalid (Rule 25 RoP). The seized local division has a discretion to manage cases where a counterclaim for revocation is filed. This might include: (i) proceeding with both the action for infringement and the counterclaim for revocation; (ii) referring the counterclaim for revocation and the infringement claim to the central division; or (iii) referring the counterclaim for revocation alone to the central chamber (i.e. bifurcation). While bifurcation is possible, the UPC has generally sought to avoid it unless there are good reasons such as efficiency or costs savings.
In assessing how to proceed, divisions have focused on familiar case management considerations: the technical complexity of the patent and the need for specialist expertise at first instance; the maturity of the validity record and whether revocation issues will predominate; the risk of inconsistent or sequentially misaligned outcomes; the proportionality of running two tracks versus a unified hearing; and the impact on interim relief, including whether a stay would unduly prejudice either side. Where a counterclaim is plainly substantial and technically central, keeping infringement and validity together has been the default. Conversely, referral of the revocation counterclaim to the central division tends to be favoured where central division subject matter expertise promises real gains in speed or quality, or where validity can be decided swiftly and dispositively.
Interim procedure
The interim phase is where the UPC turns a dense written record into a trial ready case. Typically spanning about three months after the written procedure closes, it is managed by the judge-rapporteur with a single objective: to define, focus and timetable the issues that will be tried in a one day hearing. Expect a pragmatic, problem solving approach. The judge-rapporteur will convene interim hearings or conferences, probe settlement (including mediation or arbitration where appropriate), and then crystallise outcomes in a case management order.
The interim conference is very important. Its purpose is to identify and narrow the determinative issues, record what facts are truly in dispute, and lock down the schedule. It is also where the Court deals with the mechanics that often decide efficiency: the order of witnesses, the topics on which witnesses will be heard, the use of interpreters, and the practicalities of technology at the hearing.
Time limits are short and enforced; failure to comply may trigger default decisions (see below). The message is clear: the interim procedure is critical. Parties that use it to refine issues, organise evidence and preview the arguments they will run at the oral hearing arrive with momentum whereas parties that treat it as a general guide may find themselves in serious difficulties.
See for example TCL Europe v Corning.
Standing to bring a claim
At the UPC, standing is not a box ticking exercise; it is a threshold inquiry that can decide whether a case gets off the ground. Rule 13 of the RoP sets the tone by requiring a complete statement of claim, including patent particulars, the parties, relief sought, and the supporting grounds. The Registry will examine for compliance, record the complaint in the register once the infringement fee has been proven paid, and notify the parties with the file number and date of receipt.
Where the claimant is not the sole proprietor, the entitlement requirement in Rule 13.1(f) RoP applies. The statement of claim must include evidence showing the claimant’s right to sue. The Court expects clarity on who holds which rights and on what legal basis. Chains of title should be clear; if rights have moved between group companies or through mergers, the paper trail should be ready to withstand scrutiny. Article 47 of the UPCA frames the standing of licensees. An exclusive licensee may bring proceedings unless the licence provides otherwise, but must notify the proprietor. Non exclusive licensees may only sue with the proprietor’s consent, unless the licence expressly grants that right.
Standing to bring a revocation action
Article 47(6) UPCA casts a deliberately wide net: any natural or legal person “concerned by a patent” may bring a revocation action. Recent case law confirms that “concerned” is a practical, business facing test rather than a formal one. In Pari Pharma v Philips BV (Milan Central Division), the Court held that a claimant is “concerned” if it is potentially seeking to ascertain its freedom to operate or is potentially operating in the technical field of the patent. A warning letter or explicit threat is not required in advance; the question is whether the patent presents a real world constraint or risk to the claimant’s activities or plans. Conversely, the provision is not a charter for straw men: actions brought by mere proxies without their own stake are excluded.
Language of proceedings
Language is now a strategic lever at the UPC, not a mere formality. Article 49 UPCA anchors the default position: proceedings are conducted in an official language of the contracting member state’s division or another language designated by that state. In practice, every division permits English, and the case law confirms that parties can generally pivot to English where fairness points that way.
The change of language mechanism under Article 49(5) UPCA is flexible and rooted in fairness. A defendant seeking to switch to the language of the patent must persuade the President of the Court of First Instance that, on the specific facts, the balance of fairness supports the change. The UPC has emphasised that this assessment turns primarily on the circumstances of actual parties, with particular sensitivity to the position of the defendant. Where a change is ordered, it can be conditioned on translation or interpretation arrangements so that neither side gains an unfair procedural edge.
Recent decisions sharpen the contours of the test. In Innovative Sonic v OnePlus Technology and others, the defendant succeeded in moving from German to English; the Court of Appeal endorsed that the touchstone is fairness and requires assessment of the circumstances specific to the case, with an emphasis on the defendant’s position. In Renault v Avago, the Court again granted a switch to English and distilled the relevant factors: the parties’ positions (including nationality, domicile, and relative size), the language most commonly used in the relevant technology and markets, the degree of burden a change would impose on either side, and whether the language of the patent will promote efficient, accurate adjudication. The thread through these rulings is pragmatic proportionality: the Court aims to minimise linguistic friction without disadvantaging a party or inflating costs.
Default proceedings at the UPC: two routes, two mindsets
Default at the UPC under Rule 355 RoP is not a single procedure but two distinct mechanisms serving different purposes. Understanding the divide between Rule 355.1 and Rule 355.2 is essential to choosing the right strategy.
Rule 355.1: procedural discipline without a merits review
Rule 355.1 addresses non-compliance with procedural obligations. It applies to any party who fails to take a required step within the time limits laid down by the RoP or by the Court, or who fails to appear at an oral hearing after being summoned. The key feature is that the Court may issue an order on the basis of the default alone, without examining the underlying merits.
The Court of Appeal’s decision in Microsoft v Suinno is a clear illustration. The claimant failed to provide security for costs by the deadline. The default was formal, not substantive: the failure to comply with the procedural order triggered the consequence, and the Court did not need to evaluate the claim’s prospects. The message is clear: when the Court sets a deadline, non-compliance can and will ground a dispositive order under Rule 355.1.
Rule 355.2: merits by default
Rule 355.2 is different in nature and consequence. It applies only against defendants (to claims or counterclaims) who do not respond in the proceeding. Crucially, a “decision by default” is not automatic and the claimant must put forward facts that justify the remedy sought, and the Court must satisfy itself on the merits. The failure of a defendant to respond reduces the adversarial contest, but it does not lower the claimant’s legal thresholds for relief.
BMW v ITCiCo Spain demonstrates how far Rule 355.2 can reach when the record is sufficiently developed. BMW sought revocation of a patent concerning detection of vehicle speed. Despite the defendant’s silence, the Court undertook claim construction, reviewed the pleaded prior art, and concluded that the patent lacked novelty and inventive step. The absence of a defence did not trivialise the analysis; it simply meant the Court proceeded only on the claimant’s evidence and submissions.