Santarelli - Intellectual Property’s Post

We are pleased to share the latest 𝗨𝗣𝗖 𝗔𝗽𝗲𝗿𝗶𝘁𝗶𝘃𝗼 session organised by the European Patent Litigators Network (EPLN). In this presentation, Ghislain LAURIN, French and European Patent Attorney at Santarelli, examines the European patent with unitary effect and the strategic choices it raises for patent holders: territorial coverage, costs, enforcement opportunities before the UPC and exposure to central revocation. A practical overview to support informed decisions between unitary effect, national validations and hybrid strategies. ▶️ Watch the presentation below. #UPCAperitivo #UPC #Patent

Publication of "How harmonized is Patent Law in Europe. Proceedings of the CEIPI Conference. 50th anniversary of the European Patent Convention", Volume 10 of the CEIPI conference proceedings series. Centre d'Etudes Internationales de la Propriété Intellectuelle - CEIPI

💊 How does the Unified Patent Court (UPC) change the game for Supplementary Protection Certificates (SPCs)?   SPCs nationally extend protection for pharmaceuticals and plant products after a European patent expires — their interaction with the Unitary Patent (UP) and the UPC may progressively reshape litigation strategies across Europe.   ⚖️ Key points from Gabrielle Faure-André’s analysis: 1️⃣ Since 2023, SPCs can be based on Unitary Patents, though examination remains national. 2️⃣ Jurisdiction :  • National courts handle litigations involving SPCs tied to national or opted-out patents.  • The UPC has exclusive jurisdiction for litigations involving SPCs based on Unitary Patents. 3️⃣ Reforms on the horizon:  🌍 A centralized SPC examination process;  🧩 A unitary SPC which would be valid across all UPCA Member States. 💬 The pharmaceutical industry welcomes these initiatives but awaits clarity on implementation and the balance between innovation and generic competition.   📘 Read the full article here: https://lnkd.in/erp7VjTK   #UPC #SPC #UnifiedPatentCourt #Pharma #LifeSciences #Patents #Innovation #IPLaw #Europe #Regulatory

𝐔𝐏𝐂 𝐝𝐞𝐜𝐢𝐬𝐢𝐨𝐧: 𝐚𝐮𝐱𝐢𝐥𝐢𝐚𝐫𝐲 𝐫𝐞𝐪𝐮𝐞𝐬𝐭𝐬 𝐚𝐝𝐦𝐢𝐭𝐭𝐞𝐝 𝐚𝐭 𝐟𝐢𝐫𝐬𝐭 𝐢𝐧𝐬𝐭𝐚𝐧𝐜𝐞 𝐚𝐮𝐭𝐨𝐦𝐚𝐭𝐢𝐜𝐚𝐥𝐥𝐲 𝐟𝐨𝐫𝐦 𝐩𝐚𝐫𝐭 𝐨𝐟 𝐭𝐡𝐞 𝐚𝐩𝐩𝐞𝐚𝐥 In an order dated 27 February 2026 (UPC_CoA_884/2025), the Court of Appeal of the UPC provided clarification on the treatment of auxiliary requests in appeal proceedings. The case arose after the Paris Central Division dismissed Sibio’s revocation action against Abbott’s patent EP 3 831 283 B1. Sibio appealed the decision. In its response, Abbott requested that the decision be upheld and, in the alternative, that the patent be maintained on the basis of six auxiliary requests already admitted at first instance. Sibio asked the Court of Appeal to allow additional written submissions so it could specifically address these requests. The Court declined to allow additional submissions and clarified several points: 🔵 Appeal proceedings are based on the case as presented at first instance. 🔵 Auxiliary requests admitted in first instance proceedings automatically form part of the appeal record and do not need to be refiled. 🔵 The conditional maintenance of auxiliary requests by the respondent does not constitute a cross-appeal when the respondent does not seek modification of the operative part of the decision. 𝐊𝐞𝐲 𝐭𝐚𝐤𝐞𝐚𝐰𝐚𝐲: parties filing an appeal must anticipate that auxiliary requests admitted at first instance will automatically follow the case on appeal and should therefore address them from the outset in their appeal submissions. #UPC #UnifiedPatentCourt #PatentLitigation

The Unified Patent Court's first-ever referral to the CJEU (Cour de justice de l'Union européenne). epi - Institute of Professional Representatives before the European Patent Office

In a Procedural Order dated 5 June 2026 (UPC_CFI_684/2025), the Judge-Rapporteur of the Paris Local Division of the Unified Patent Court (UPC) granted Align Technology’s application under Rule 9.2 RoP to disregard belated arguments. The Order is noteworthy because it provides a clear illustration of the UPC’s strict approach to procedural rules and, in particular, the front-loaded nature of UPC litigation. The Defendants had challenged infringement in their Statement of Defence only with respect to certain claim features. In their Rejoinder, however, they introduced additional non-infringement arguments relating to other claim features, arguing that these submissions were a response to new grounds allegedly made by the Claimant in its Reply to the Statement of Defence. The Court rejected that position, considering that the allegedly new issues had already been presented in the original Statement of Claim by the Claimant. They could and should therefore have been addressed in the Statement of Defence by the Defendants. Referring to the objectives of procedural efficiency, fairness and equity, and celerity underpinning the Rules of Procedure (RoP), the Court reiterated that Defendants must present their non-infringement case at the proper procedural stage. As no justification for the late filing was established, the new arguments and supporting exhibits were declared inadmissible and disregarded. They may not be relied upon at the oral hearing or at any later stage of the proceedings. 𝗞𝗲𝘆 𝘁𝗮𝗸𝗲𝗮𝘄𝗮𝘆: the UPC expects parties to fully develop their infringement and non-infringement cases from the outset. The Order is a further reminder that the UPC’s front-loading principle is not merely procedural guidance but a requirement that can have decisive consequences for a party’s case.

Ex Parte Proceedings before the Unified Patent Court: The Court's Exceptional Weapon - Used Sparingly. When can a court act without hearing the other side? An article by Pálma Gróf, on behalf of the UPC Sub-Committee of the epi Litigation Committee, maps how the Unified Patent Court handles ex parte relief - the exception to the fundamental audi alteram partem principle. epi - Institute of Professional Representatives before the European Patent Office #PatentLaw #UnifiedPatentCourt

We are pleased to highlight the contribution of Samuel Deschamps, Partner at Santarelli, to the latest edition of Managing Intellectual Property Today. In his article, “The UPC’s Growing Influence on European Innovation,” Samuel examines the initial trends emerging from the practice of the Unified Patent Court and their implications for innovative companies, including evidence gathering, procedural efficiency, and the consideration of scientific realities by technically qualified judges. An insightful analysis of how the UPC is gradually shaping the protection and enforcement of innovation in Europe. Discover the key takeaways below and read the full article in Managing IP Today. #UPC #Patents #Innovation #PatentLitigation

Mediate, Arbitrate, Innovate - The Patent Mediation and Arbitration Centre of the Unified Patent Court unboxed. Set to launch in spring 2026, the Patent Mediation and Arbitration Center (PMAC) of the Unified Patent Court is poised to reshape IP dispute resolution. AIPPI - International Association for the Protection of Intellectual Property #IntellectualProperty #UnifiedPatentCourt

In an Order issued on September 21, 2026 (UPC-CoA-90/2026), in the case Sidel Participations SAS v. Omnia Technologies S.p.A. et al., the UPC Court of Appeal stated that the question whether an action for a declaration of non-infringement of a patent can be filed before its grant is not a question of c͟o͟m͟p͟e͟t͟e͟n͟c͟e̲ of the UPC, but one of a͟d͟m͟i͟s͟s͟i͟b͟i͟l͟i͟t͟y̲. On March 3, 2026, Omnia filed an action before the Paris Central Division seeking a declaration that one of its products does not infringe two European patents of Sidel. At that time, neither patent had yet been granted. Sidel subsequently filed applications to opt out the patents on April 2 and April 8. The patents were then granted on April 22 and May 20. Before grant, Sidel also filed a Preliminary objection, arguing, inter alia, that the UPC lacked competence under Art. 32(1)(b) UPCA because that provision refers to actions for declarations of non-infringement of “patents” and not patent “applications”. The Preliminary objection was dismissed and Sidel appealed. The Court of Appeal dismissed Sidel’s arguments. Although the patents had not yet been granted when the action was filed, the CoA considered that Omnia aimed to obtain a declaration of non-infringement in respect of the “patents” following their grant, and that references to the pending patent applications merely described their status at the time of filing. The action was therefore an action for a declaration of non-infringement of “patents”, hence falling, in principle, within the competence of the UPC under Art. 32(1)(b) UPCA. The Court then drew an important distinction: whether such an action can be filed before the patent is granted is not a question of the UPC’s competence, but of the admissibility of the claims. Since R. 19 RoP exhaustively lists the objections that may be raised by way of a Preliminary objection, and admissibility is not among them, the Court did not decide whether Omnia’s action had been brought “too early”. This question, including whether R. 61 and R. 63 RoP require the patent to have been granted, remains to be determined in the further proceedings. Importantly, however, the Court held that Omnia’s action, although filed before grant, constituted an “action” for the purposes of Art. 83(3) UPCA. Since the action had been brought before Sidel filed its opt-out applications, those opt-outs were therefore ineffective. 𝗞𝗲𝘆 𝘁𝗮𝗸𝗲𝗮𝘄𝗮𝘆: The CoA leaves open whether an action for a declaration of non-infringement filed before grant is admissible. Nevertheless, it held that, in the present case, the filing of such an action before grant rendered subsequent opt-outs ineffective under Art. 83(3) UPCA. Whether this conclusion would stand if the action were ultimately found inadmissible as having been brought “too early” remains unanswered.