Legal Lens on the UPC | May 2024


The Unified Patent Court (UPC) is revolutionizing the way patents are enforced in Europe, and McDermott’s intellectual property team is here to help you navigate this dynamic landscape. Our Legal Lens on the Unified Patent Court newsletter is designed to keep patent holders and legal departments well-informed. And with an on-the-ground team in Germany, France, the United Kingdom and the United States, we offer a unique cross-border perspective.




Topics: language of proceedings; change of language of proceedings

The language of proceedings at the UPC has been vigorously disputed in many actions. In an apparent effort to reduce such disputes, the UPC Court of Appeal (CoA) changed the language of the proceedings for the first time in Curio Bioscience Inc. v. 10x Genomics, Inc. and provided much needed clarity on the relevant considerations.

In February 2024, the President of the Court of First Instance rejected Curio’s application to change the language of proceedings brought by 10x Genomics before the Local Division Düsseldorf from German to English. Despite the president having considerable discretion in assessing the fairness of the proceedings’ language, the CoA reversed on April 17, 2024, finding the Local Division’s rejection “based on an incorrect reading of what constitutes fairness and what circumstances are relevant.” Under Article 49(5) of the Agreement on a Unified Patent Court (UPCA), the UPC must consider the interests of both the plaintiff and the defendant, with the defendant’s position being the decisive factor if the parties’ interests are equally balanced.

Several factors favored Curio’s application, including:

  • The asserted patent was granted in English.
  • Both parties are US companies.
  • The infringement evidence, underlying field of technology and majority of evidence for Curio’s defense (including the prior art) was in English.
  • Germany designated English as one of the languages for its UPC divisions.
  • Curio is a much smaller company than 10x Genomics and thus bears a heavier burden from the language of the proceedings being different than the company’s language.

The CoA also clarified that several factors carried little to no weight, such as:

  • Any delay due to the Court of First Instance providing certified translations of orders or decisions
  • Whether the defendant is active in the European market, including in the contracting member state of the Court of First Instance
  • The portion of EU citizens who speak a particular language
  • The language qualifications of the parties’ representatives
  • The nationality of the judges hearing the case
  • Whether the Court of First Instance held the last oral hearing in the underlying proceedings.


  • The UPC looks carefully at the relative circumstances of the plaintiff and the defendant when weighing whether to change the language of proceedings. Fairness is the key consideration with the UPC favoring the defendant if the parties’ interests are equally balanced between two languages.
  • The language in which the patent was granted is one of the most important considerations. It’s usually fair to the plaintiff to conduct proceedings in the language of the patent if the plaintiff was the one who chose the language of the patent. It’s not surprising that English is now the predominant language of UPC proceedings given that most unitary patents in Europe are granted in English.


Topics: comparable license agreements; FRAND; SEP

On April 30, 2024, the Local Division Mannheim issued three orders directing Panasonic Holdings Corporation to produce specific existing license agreements that allegedly support that Panasonic’s license offer to Chinese electronics company Xiaomi Technology Germany GmbH was fair, reasonable and non-discriminatory (FRAND). Due to confidentiality clauses in the agreements, Panasonic requested that the UPC order disclosure to avoid any risk of a contractual breach.

These first standard essential patent (SEP)-specific orders from the UPC generally align with SEP case law from German courts, which highlight the importance of transparency and existing license agreements as benchmarks in FRAND licensing negotiations.

For instance, the UPC emphasized that it must respect the primacy of European law (See Articles 20, 21 and 24(a) of the UPCA), which provides the essential competition law framework for enforcement of an SEP (See Articles 101 and 102 of the Treaty on the Functioning of the European Union (TFEU)). In particular, the Court of Justice of the European Union (CJEU) developed and clarified European competition law in Huawei Technologies Co. Ltd. v. ZTE Corp., which established a FRAND negotiation program outlining the steps for SEP holders and implementers. Among those steps, the parties are required to reference license agreements in the relevant industrial sector, which serve as a benchmark for comparing and assessing offers by SEP holders and counteroffers by SEP implementers.

The UPC orders also confirm that under European competition law, SEP holders have a legal obligation to be transparent in FRAND negotiations and thus must provide access to their relevant license agreements. Accordingly, SEP holders at the UPC must substantiate why their license offer is FRAND, whereas SEP implementers must substantiate why the offer is not FRAND. In either case, the party will often refer to relevant license agreements. However, such agreements are often subject to confidentiality provisions that only permit disclosure with consent of the contracting party or via a court order.

To permit disclosure of the agreement, the SEP holder or implementer ordinarily will first seek consent from the third-party licensee. If the licensee withholds consent, the SEP holder or implementer can provide evidence of its failed efforts and seek a disclosure order from the UPC. Because the duty of transparency, as a result of cogent competition law, supersedes conflicting contractual clauses agreed upon between the parties, the UPC will typically order disclosure of a license agreement when the third party fails to provide or adequately justify its nonconsent.

Furthermore, even when a party (like Panasonic) requests an order against itself, they may still redact passages that are irrelevant to their factual allegations and legal arguments, in accordance with Article 43 of the UPCA. Additionally, the UPC will order a specific framework to protect confidentiality upon a request under Rules 262 and 262A of the UPC Rules of Procedure (RoP).


  • SEP holders or implementers may request the UPC to order the disclosure of specific comparable license agreements in SEP cases without the requestor breaching a contractual confidentiality clause. The Local Division Mannheim developed this approach by interpreting the CJEU’s decision in Huawei v. ZTE, and it’s likely that other UPC divisions will follow the same interpretation and result.
  • To minimize the risk of a contractual breach, the party ordered to disclose a license agreement should redact passages of the agreement that are not referred to in the relevant statement of facts or legal argumentation. Additionally, said party should consider filing a separate application with the court to protect confidential information.


This section reflects data that entered the UPC’s register as of May 14, 2024.


*The number of counterclaims for revocation cases does not necessarily reflect the UPC’s true case load because the UPC’s Case Management System required several defendants in infringement proceedings to launch their own counterclaim for revocation, even if the substance of the counterclaims was fully identical across the parties. This inflates the number.






We provide real-time insights on UPC filings, decisions and other related developments. Additionally, our lawyers regularly participate in industry-leading conferences and events to assess the UPC’s progress and equip companies with the knowledge they need to navigate the new court. Check out our latest insights and recent speaking engagement below.

Legal Lens on the Unified Patent Court, April 2024

Legal Lens on the Unified Patent Court, March 2024

UPC Court of Appeal Issues First Decision, Overturns Preliminary InjunctionOn the Subject, March 1, 2024

LSPN North America Spring 2024 | Unified Patent Court, May 8-9, 2024


Have questions or want to discuss your UPC strategy? Contact Hon.-Prof. Dr. Henrik HolzapfelChuck Larsen or Diana Pisani.