Last year’s establishment of the Unified Patent Court (UPC) marked a significant milestone in intellectual property (IP) law and Marks & Clerk has been active at the court, attending hearings and filing actions for our clients at the UPC.
In an early historic moment for the court, the Paris Central Division held its first ever full hearing on the merits for a revocation action on 7 June 2024, where Marks & Clerk co-represented and advocated for Meril GmbH, Meril Life Sciences Pvt. Ltd and Meril Italy as claimants for the revocation against European patent EP 3 646 825, owned by US medical device company Edwards Lifesciences Corporation. Marks & Clerk Partner and UPC Representative Jonathan Stafford handled advocacy for the Marks & Clerk team, supported by UPC Representative Greg Carty-Hornsby (Principal). Marks & Clerk litigator and UPC expert Charlie Balme also attended the hearing.
The hearing joined the central revocation action brought by Meril Italy against Edwards' patent EP 3 646 825 in August 2023 and the counterclaims for revocation brought by Meril GmbH and Meril Life Sciences Pvt. Ltd. in infringement proceedings against the same patent before the Munich Local Division, after the Munich Local Division referred the counterclaims to the Paris Central Division.
At the request of the claimant, the Court held the hearing in the largest room available in the International Chamber of the Paris Commercial Court. After a short summary of the case from Mr. Paolo Catallozzi (Presiding-Judge and Judge-Rapporteur), but without any definitive preliminary opinion having been announced, the hearing commenced at 9.30 am and the representatives of Meril entities as claimants were given two hours in total to present their case for revocation. Arguments were heard from the claimant’s representatives on procedural inadmissibility of Proprietor’s application to amend the patent, added matter, priority, claim construction, novelty and inventive step, and parties were allowed to support their oral submissions with illustrative slides displayed on several large screens in the court room. The Proprietor was given two hours to reply. After a break for lunch, several short points of rebuttal were heard from both sides, followed by some questions from the judges, before the proceedings closed around 4.30 pm. As the proceedings were heard jointly, but still remained separate, the presiding judge closed proceedings with the announcement that no decision would be handed down on the day, and that not one but two decisions would be handed down in due course.
The efficient and fast processing by the UPC was commendable and in line with its promise to conclude complex and sophisticated litigation within a year of claims being served. The proceedings brought together a talented team of international lawyers from France, Germany and the UK, showcasing the UPC’s role in fostering cross-border legal cooperation. Marks & Clerk is no stranger to such collaboration as our mixed team of litigators and patent attorneys has vast experience in working collaboratively with local European legal teams in handling pan-European litigation for our clients.
Our experience at the UPC not only underscores the significance of this new court but also reaffirms our commitment to staying at the forefront of legal developments. At Marks & Clerk we remain excited about the opportunities the UPC brings and are dedicated to leveraging its capabilities to serve our clients better.
As Europe’s newest court, it was brilliant to experience first-hand how the UPC will enhance the efficiency and coherence of patent litigation across member states, and we are proud to be an active part of this evolving landscape.
Left to right: Felipe Zilly (Hogan Lovells), Yun-Suk Jang (Hogan Lovells), Carole-Anne Bauer (Gide x Regimbeau), Alexander Klicznik (Hogan Lovells), Emmanuel Larere (Gide x Regimbeau), Peter-Michael Weisse (Wildanger), Nilay Lad (Meril), Andreas von Falck (Hogan Lovells), Raphaëlle Dequiré-Portier (Gide x Regimbeau), Greg Carty-Hornsby (Marks & Clerk), Anne Seibel (Gide x Regimbeau), Jonathan Stafford (Marks & Clerk), Luca Chavallier (Gide x Regimbeau), Aurélien Grimberg (Gide x Regimbeau), Beatrice Wilden (Hogan Lovells), Julien Guesnier (Gide x Regimbeau), Ludivine Meissirel-Marquot (Gide x Regimbeau).
