Context: In the Unified Patent Court (UPC), the parties asserting patents and those challenging their validity often have different preferences. Fairly often, infringement defendants prefer to pursue standalone revocation claims in the Central Division (CD) while infringement plaintiffs prefer to put their claim and any revocation (counter)claims before a Local Division (LD).
What’s new: A recent order by the Milan seat of the CD (PDF) shows an interesting venue fight between pharmaceutical giants GlaxoSmithKline (GSK) and Pfizer. GSK filed an infringement action over EP4183412 (“Rsv f protein compositions and methods for making same”) with the Dusseldorf LD between the decision by the European Patent Office (EPO) to grant the patent and the official publication of its issuance. Pfizer disputes the admissibility of that infringement filing, at least at the relevant time, and in an effort to win the race to the courthouse (or, more accurately, to the case management system (CMS)), filed a revocation claim with the Milan CD 9 seconds after midnight on the date on which the grant was (foreseeably) published by the EPO. The Milan CD has now decided against GSK’s objection to the revocation action and agrees with Pfizer that the infringement filing was premature.
Direct impact & wider ramifications: For now, the revocation action in Milan can continue, but leave to appeal was granted. It also remains to be seen what the Dusseldorf LD will make of Pfizer’s objection to the timing of the infringement action, though the CD argues that it need not resolve the question of whether the infringement action had matured (between the EPO decision and the formal publication of grant) into admissibility. It is still possible that the entire dispute will be consolidated in one division, with the plaintiff apparently favoring Dusseldorf.
This the chronology of events:
| Date | Event |
| July 18 | EPO examining division decides to grant the patent |
| August 5 | GSK sues 14 Pfizer entities in Dusseldorf LD |
| August 14 | EPO publishes decision of grant in European Patent Bulletin; 9 seconds after midnight, various Pfizer entities bring revocation claim in Milan seat of CD |
| August 22 | EPO notifies of unitary effect of patent, which is retroactive as of August 14 (the date of the publication of the grant of the patent) |
| September 20 | Pfizer objects to admissibility of GSK’s pre-publication-of-grant infringement action in Dusseldorf LD |
| October 15 | GSK objects to CD’s jurisdiction over revocation action filed in that venue despite an earlier-filed infringement complaint pending in the Dusseldorf LD (Art. 33(4) UPC Agreement (UPCA)) |
The CD’s decision to keep the revocation claim holds that “[a] partial overlap between the parties is not enough to find for a situation of Art. 33 par. 4 s. 2 UPCA.” This is the situation in the two relevant UPC actions:
| Number of Pfizer entities | Infringement defendants | Revocation claimants |
| 6 | yes | yes |
| 8 | yes | no |
| 2 | no | yes |
The two Pfizer entities that are not “concerned by the infringement action” (among them Pfizer Inc., the U.S. corporate parent) are then deemed to be “concerned by the patent[-]in[-]suit” at any rate, so their involvement is considered admissible and serves to distinguish the set of revocation claimants from the set of infringement defendants.
The CD then also addresses the question of whether it has jurisdiction to hear the revocation case despite the earlier-filed Dusseldorf infringement complaint. Here, the CD stresses that the UPC only has jurisdiction over granted patents, and a patent has not been granted by the EPO, in the CD’s opinion, until the day on which its grant is mentioned in the European Patent Bulletin. GSK argued that publication is just a formality and the actual decision was already made well in advance.
The fact that Pfizer was able to file a revocation complaint 9 seconds after midnight on the date of grant also shows that they knew about the patent grant before it was published. But that did not sway the CD.
The timing of the revocation action suggests to ip fray that Pfizer wanted to pre-empt any filing that GSK might have made (but apparently did not even attempt to make) on the date of the patent grant in order to bring a valid infringement complaint prior to a revocation claim. GSK would like the UPC to avoid such races to the courthouse by simply allowing a patentee to sue between the actual decision by the EPO to issue a patent and the publication of its grant. But Pfizer argues that this would give the patentee an unfair advantage.
A trickier question is subsequently addressed, but not resolved: whether “an infringement action that is lodged before the mention of the grant in the EPO bulletin can ‘grow’ into admissibility or not, or if so when such a ‘growth’ would happen”.
Here, the CD says it does not need to await the Dusseldorf LD’s decision on admissibility because only an earlier-filed admissible complaint could deprive it of jurisdiction over the revocation action.
The CD also declined to hold a hearing and threw out various auxiliary requests for stays of the revocation action. Obviously, GSK would not want a revocation decision to come down before a ruling in the infringement case.
The outcome of GSK’s likely appeal will be very instructive.
Panel: Presiding Judge Andrea Postiglione, Judge Anna-Lena Klein and Technically Qualified Judge Steen Wadskov-Hansen.
Counsel for GSK: Bird & Bird’s Dr. Daniela Kinkeldey.
Counsel for Pfizer: Marks & Clerk’s Gareth Williams.