The Paris Opt-out mock trial: Valid or not valid that is the question…

UPC Judges recruitment 2019

A mock trial addressing the issue of the validity of an opt-out took place in Paris on 06th June 2016. It was organised by the Union pour la Juridiction Unifiée des Brevets (UJUB) and hosted by the MEDEF.

The trial opposed two companies, Haussmann La Riche and Generoso, over the revocation action of one of Haussmann La Riche’s patent. The action had been initiated by Generoso before the UPC central division. Haussmann La Riche however challenged the competence of the UPC, since it considered that it had correctly taken the necessary steps to “opt out from the exclusive competence of the Court”. Generoso on the other hand  argued that the UPC was competent because the opt-out had been incorrectly. In fact, the opt-out had been made in the name of a corporate entity which  no longer legally existed and did not name the patent co-owner. In the alternative, Generoso argued that Haussmann La Riche’s secretary had no capacity to register the opt-out, as only the head of the patent department and European patent attorney had the authorization to do so on behalf of the proprietors.

According to the UPC Rules of Procedure, the question whether the UPC has jurisdiction must be presented as a Preliminary objection (Rule 19 of the Rules of Procedure, to which Rule 48 in fine refers) within one month of the lodging of the Statement of claim. This question then falls within the competence of the judge-rapporteur (Rule 20), who for this matter is the presiding judge, except if the judge-rapporteur decided to refer the matter to the panel under Rule 102.

Both parties, represented by British, French, Dutch lawyers and patent attorneys presented their arguments to Marie Courboulay (Vice-president of the 3rd Chamber of the Tribunal de Grande Instance of Paris), the French judge-rapporteur who delivered her ruling on the issue of the validity of the opt-out at the end of the trial. She held, in line with the audience’s vote (though it was held in her absence), that the opt-out was indeed invalid and that the UPC was competent.

[embeddoc url=””]

The hearing can be also viewed here while the detailed synopsis of the case and the parties’ documents can be viewed here.

We await of course for your comments and views on the validity of this opt-out. Valid or not valid that is the question…

UPC Mock Trial 2: 3 Abrasive v La Toilemeri

UPC Judges recruitment 2019

 On Friday 2nd April 2015 as announced on the UPC Blog, the « Union pour la Juridiction Unifiée des Brevets » organised a second mock trial replicating the Unified Patent Court. (Find here our post on the first UPC mock trial organised by the UJUB). It was with great pleasure that the UPC Blog editorial team attended this mock, which once more offered a remarkable insight into the functioning of the UPC and gave substance to its rules of procedure and to the UPCA.

The afternoon was divided into three sessions:

  • Hearing on request to preserve evidence and inspection of the premises
  • Hearing on the application for provisional measures
  • Court delivered its judgment

I. The Facts:

This second mock trial opposed a US company “3 Abrasive” (the Claimant) and a French company “La Toilemeri” (the Defendant) over an infringement action of a European patent for “flexible abrasive”.

The patented invention was described in details as “a method for manufacturing an abrasive member comprising a flexible sheet with a multitude of discrete metal protuberance wherein a multitude of copper protuberance are formed on the flexible sheet, nickel protuberances are electrodeposited over the copper protuberances in the presence of particulate abrasive material so that the particulate abrasive material becomes embedded in the nickel deposits and wherein the voids between the protuberances are at least partially filled with resin material, the resin material being selected so as to reduce lateral movement of the nickel deposits.”

This patent is “valid and in force in the Contracting States designated by the Patent, including France, Germany, The Netherlands, United Kingdom and Sweden. All the Designated Contracting States of the Patent have ratified and implemented the UPC Agreement.”

The patent was also the subject of an opposition proceeding in the European Patent Office. In a decision dated 3 September 2014, the opposition division however had rejected the opposition and decided that the patent be maintained as granted. At the time of the mock trial, an appeal was pending before a Board of Appeal.

3 Abrasive alleged that La Toilemeri, the Defendant advertised a product on its website whose characteristics could only be obtained with the method developed in 3 Abrasive’s patent. La Toilemeri, in fact marketed a product described as “an excellent lateral bearing of the abrasive patches, a reinforced securing of the abrasive patches onto the support.”

Following this discovery, 3 Abrasive decided to engage an infringement action before the UPC local division in Paris since no application for opt-out had been made and La Toilemeri is domiciled in France. The Statement of claim was filed on 13 October 2014 in English, which under Art 49(2) UPCA, is one of the official languages of the EPO that the Paris local division accepts.

La Toilemeri filed a defence on 18 December 2014 “challenging any evidence of infringement” and a counter claim for revocation of the Patent. Simultaneously, the Defendant filed an Intervention in the Appeal procedure, which had been initiated at the EPO on 21 November 2014 by a third party. The Defendant, also requested the Court that, under the provisions of Rule 298, the appeal procedure at the EPO be accelerated and to stay its proceedings pending the outcome of the EPO appeal.

The local division in Paris:

The Panel of the local division in Paris comprised three judges: Mr Paul Maier (FR), President, Mrs Sophie Canas (FR) and Mr Colin Birss (UK), who was also appointed in October 2014 as the Judge Rapporteur (following Rule 18).

According to Article 33 (3)(a) UPCA the Court then decided to keep the applications for infringement and revocation together and Mr Kim Finnilä (FI) was subsequently allocated to the panel as technically qualified judge.


II. Application for preserving evidence and inspection (The application can be seen here p 89 of the binder):


Following La Toilemeri’s statement of defence, in which it insisted that 3 Abrasive did not have any evidence of the alleged reproduction of 3 Abrasive’s method of manufacturing, 3 Abrasive decided to file on 29 December 2014 an application for preserving evidence (Rule 192) with a request of an order for inspection at the premises of La Toilemeri, near Paris.

3 Abrasive also requested the Court to issue this order without hearing the Defendant so as to avoid any risk of the evidence disappearing.

The inspection was granted (the decision of the court can be seen here at page 99 of the binder) and revealed that:

  • The fabrication process of nickel mixed with diamond powder was effectively electro deposited through a layer of non-woven fabric, which thus matched 3 Abrasive’s patent. This was confirmed by a test report.
  • A distribution agreement for the product in Europe with commercial indications.

III. Application for provisional measures (The application can be seen here at page 119 of the binder):

After 3 Abrasive spotted that La Toilemeri had announced on its website that it would launch its product at an international exhibition in Paris in May 2015, it applied under rule 206 for provisional measures. La Toilemeri filed observations against this application (which can be seen here at page 142 of the binder).

IV. Judgment of the Court:

While the Court was deliberating the participants were asked to vote, and by a large majority decided that 3 Abrasive should not be granted the provisional measures it was requesting against La Toilemeri. The Court however decided to grant 3 Abrasive the injunction it was requesting.

The slides explaining the technical elements of the case and the relevant UPC articles and rules can be found here.

The UJUB has dedicated a website to this second mock trial on which notably the video of the whole trial can viewed. This will give a great insight into the functioning of the UPC for those who could not attend or stream the trial. You will also find the whole synopsis and the presentation of the different “actors”.

New Mock Trial UPC April 2nd 2015 Paris!

The UPC Blog would like to share this invitation to the second UPC Mock Trial organised by the UJUB (Union pour la Juridiction Unifiée des Brevets). We had attended the UJUB first mock trial – see our post here– which was a real success and highlighted the incredible challenge that the UPC represents. The UPC Blog will thus be delighted to be present to this new Mock Trial which should particularly address the means of evidence and the provisional measures. 
Mock Trial UPC April 2nd 2015 Paris – SAVE THE DATE
The date of entry into force of the European Unified Patent Court is 
not yet known. However after the Trier Oral Hearing on the 17th draft
of Rules of Practice we can test the proceedings so to be well prepared
at this date.
The Mock Trial that has been held last May by UJUB (the association of
most patent professionals in France) has been a great success.
UJUB is managing of a second one that will take place in Paris on
April the 2nd
This mock trial should particularly address the means of evidence and
the provisional measures.
We will provide you soon with further details.
Please save this date : Paris, April 2nd 1pm-6pm
Union pour la Juridiction Unifiée des Brevets –  UJUB

UPC First Mock Trial


Update: A second Mock Trial is organised by the UJUB in Paris on April 2nd 2015! See our post on this new mock here


On May 22nd, a mock trial before the Unified Patent Court at the Central Division in Paris was organised by the Union pour la Juridiction Unifiée du Brevet, the MEDEF, and the Institut National de la Propriété Intellectuelle[1].


This mock was opposing two fictitious companies in patent infringement proceedings. The document bundles with the background information, the preliminary objections and the main pleadings of the case can be found here.


The trial was chaired by Mr Alain Girardet from the French Court de Cassation, the Judge rapporteur, Dr Klaus Grabinski from the German Bundesgerichtshof, and Mr Walter Holzer, former president of the EPI who held the role of Technical judge.


After a quick presentation of the background information by the Registrar, Me Dominique Ménard, the mock trial opened with questions and answers with the Judge rapporteur on the issues highlighted during the interim phase. A video recording of the interim conference was also showed to the audience.  This was followed by the oral submissions of the claimant and defendant. The claimant was represented by Mr Michael Burdon from the United Kingdom, and the defendant by Me Pierre Véron and Me Amandine Métier from France. Finally while the panel was discussing its decision the audience was asked to vote on the outcome of the case.


The professionalism of all participants and the resources deployed gave a very realistic feel to this mock trial, which was saluted by the audience. This mock was the first opportunity for all the lawyers present to visualise the different parameters at stake with the UPC. Hence it appeared very clearly to the audience that new technologies and technical resources will be key for the UPC such as with interim video conferences and their coordination between parties across Europe. Similarly this mock trial highlighted very realistically the major differences between national jurisdictions and the UPC, the most obvious ones being of course the language of proceedings and the need to master new and extended rules of procedure.


Thanks to the hard work and the talent of its organisers, this mock trial was a real success both in terms of anticipating the legal challenges and benefits for lawyers attached to the UPC and reminding its audience of the central place that the UPC will take when it will come into effect.

The UPC Blog would like to invite its readers to view the mock together with the document bundle of the case here.



[1] Also sponsored by the AACEIPI, AAPI, ACPI, AFEP, AIPPI, AFPPI, APEB, ASPI, LES.