FORUM IP Talks: Dr. Jochen Herr on UPC, FRAND, and Cross-Border Enforcement Topics

Finnegan partner Dr. Dr. Jochen Herr, LL.M., was interviewed by FORUM IP Talks to discuss the Fourth Annual FORUM seminar, and other topics. He serves as Chair of the Global Patent Litigation FORUM, held in Munich on October 29. 

The Mannheim Local Division held — and the UPC Court of Appeal has since confirmed on appeal — that the UPC can exercise jurisdiction over European patent designations in non-UPC states, including the UK, where the defendant is domiciled in a UPC Contracting Member State. What does this long-arm reach mean in practice for defendants who have structured their European operations to avoid pan-European exposure, and how do you expect litigation strategy to adapt as a result?

This development is a genuine strategic widening of the forum for the claimant as it lets a patentee gather several designations of the patent into one proceeding before one panel, turning the UPC into something close to a single-stop venue. But drawing foreign designations into the case inevitably makes the litigation more complex. It means for the Plaintiff that, for each foreign designation, the infringement must be argued under the national law of the designation state. On the Defendant side, it is crucial to prepare early for cross-border litigation and consider a parallel national invalidity counterstrategy as one way to lift a non-UPC designation out of the court's reach is to launch national revocation actions early in the countries that matter. This is particularly true for states (such as Switzerland, Spain, the UK), where the UPC has no competence to rule on validity.

Where a defendant raises invalidity of a non-UPC designation as a defense, the UPC's findings on validity have only inter partes effect, and enforcement of any resulting judgment outside UPC member states depends on national procedures. Does that combination of limitations make the long-arm jurisdiction less attractive for patentees in practice, or does it still represent a net gain compared to running parallel national proceedings?

Overall, I believe long-arm jurisdiction remains a net gain for most patentees. For UPC-domiciled defendants, the practical benefit is obvious: a single UPC proceeding can address conduct both inside and outside the UPC territory. Even for foreign defendants, many of the enforcement questions are not entirely new. Whenever a patentee seeks remedies that ultimately need to be executed in a non-UPC country, some form of national recognition or enforcement step would have been necessary.

The real attraction lies in consolidating multiple disputes into a single proceeding with one litigation team, one evidentiary record and one hearing. That creates efficiencies and, in many cases, significant settlement pressure. In this context, the inter partes effect of UPC validity findings should not be underestimated. Between the parties, such findings can have much of the practical effect of an erga omnes ruling until a national court reaches a contrary conclusion. Of course, the model is less compelling where a well-resourced defendant launches parallel invalidity attacks before national courts and the patentee ultimately needs to enforce contested remedies abroad. In those cases, the inter partes limitation and any procedural hurdles reduce some of the efficiency gains. But overall, I see long-arm jurisdiction as a clear strategic advantage.

A pan-European injunction issued by the UPC against a defendant domiciled in Germany is straightforward to enforce within UPC member states. What happens when the patentee seeks to enforce that injunction — or a damages award — in a non-UPC state such as the UK or Switzerland? Where are the practical friction points, and how are clients managing that risk?

The UPC has always operated in a system where adjudication is centralized, while enforcement remains national. Even within UPC territory, the Court issues the judgment, but the practical enforcement measures are governed by the law of the state in which enforcement is sought. The emergence of long-arm jurisdiction simply extends that dynamic beyond the UPC framework. The real challenge is therefore not jurisdiction, but enforceability. Switzerland benefits from the Lugano regime, which makes recognition comparatively straightforward and reduce the likelihood of serious challenges at the recognition and enforcement stage. In jurisdictions without a comparable framework, most notably the UK, the key friction points are recognition of the judgment and the translation of UPC remedies into the domestic legal system.

In specific cases, one can envisage public-policy objections or arguments that a UPC judgment addressing UK patent rights exceeded the Court's proper jurisdiction, potentially leading UK courts to distinguish between the UPC and non-UPC aspects of the decision. That said, the practical significance of these issues depends heavily on the claimant's objectives. If the judgment is primarily intended to create commercial leverage and encourage settlement, the recognition hurdles are often of secondary importance. Where actual enforcement outside the UPC territory is required, an additional national recognition step may be necessary. That is certainly less efficient, but it is far from insurmountable. For most clients, the focus is therefore on anticipating and managing these enforcement risks at the outset, rather than viewing them as a reason not to pursue UPC relief in the first place.

The Munich Regional Court I independently calculated a FRAND rate and granted an injunction in *Avago v. Renault* in February 2026, reportedly using comparable licences with other automotive manufacturers as the primary benchmark. What does this ruling signal about Munich's approach to court-determined FRAND rates — in particular the distinction between an implementer's external and internal willingness to take a licence — compared to the UK's global rate-setting practice?

Avago v. Renault, together with Munich's recent FRAND Guidelines, reinforces Munich's position as one of the leading and agenda-setting FRAND venues. The decision is particularly noteworthy because the court did not merely assess the parties' licensing positions but actively determined a FRAND corridor. Equally significant is its distinction between external and internal willingness, paying an undisputed amount and providing security may defeat a hold-out allegation, but it does not protect an implementer from an injunction once the SEP holder's offer is found to be FRAND. This highlights a fundamental difference from the UK approach. While English courts tend to focus on setting a global FRAND license as a means of avoiding an injunction, Munich is considerably more willing to grant injunctive relief where a FRAND license was available but not taken.

The UK, Germany, and the UPC are each developing their own approaches to FRAND rate-setting. Where do you see the most significant doctrinal divergences — for instance on the comparable license method, the non-discrimination limb, or the treatment of hold-out — and what does that mean for parties choosing where to litigate?

The key divergence is not so much the treatment of comparable licenses, non-discrimination, or hold-out, but the role courts assign to themselves in FRAND disputes. UK courts have embraced active rate-setting and are prepared to determine the terms of a global FRAND license, whereas German courts typically assess FRAND issues as a defense to injunctive relief and ask whether the patentee's offer is FRAND. While the UPC has not yet produced a meaningful body of UPC case law on FRAND rate-setting, it currently appears the most eager forum to tackle these issues.

Given the withdrawal of the EU SEP Regulation by the European Commission in 2025, do you expect a shift of the centre of gravity in FRAND disputes away from the courts, or will the judicial frameworks developing in Munich, London, and Luxembourg remain the primary arena?

At least for the time being, I do not see the center of gravity shifting away from the courts. The EU SEP Regulation appears, for all practical purposes, to have been shelved, and despite the Commission's efforts there is currently little indication of and no political will for a move towards an administrative framework replacing judicial dispute resolution. As a result, in Europe, the key developments will continue to come from the courts, whether in the member states or through the UPC and at least for now, the future of FRAND appears far more likely to be shaped by case law than by legislation.

In the 2024 interview, you described UPC inspection proceedings as a hybrid of the German Düsseldorf model and the French *saisie-contrefaçon*. Two years on, where has the emerging UPC case law surprised you — for instance in how divisions are applying the proportionality test, the 20-working-day deadline, or the standard for granting ex parte orders?

What has perhaps surprised me most is that the UPC has, in practice, moved closer to the French saisie-contrefaçon model than many initially expected. That development is not entirely surprising given the wording of Article 60 UPCA and the corresponding Rules of Procedure. At the same time, the UPC has not simply imported the French model. Unlike a traditional saisie, UPC measures remain subject to a stronger framework of proportionality, confidentiality protections and judicial supervision. The Court of Appeal recently underscored this distinction by holding that bailiffs and experts may not question a defendant's personnel on technical matters during an inspection; any such examination would require separate court control. Overall, the emerging case law points towards a powerful evidence-gathering mechanism that is closer to the French approach than the traditional Düsseldorf model but still retains important procedural safeguards of its own.

The *Schutzschrift* — the pre-emptive protective brief — has become an established defensive tool in Germany and is available before the UPC as well. In global litigation campaigns where a patentee may seek inspection orders simultaneously in multiple jurisdictions, how do you advise clients on coordinating *Schutzschrift* filings across forums?

A protective letter strategy should always be driven by where an attack is realistically expected. If there is a credible risk of ex parte measures, whether before a national court or the UPC, parties should consider filing protective briefs in the relevant forums. That is ultimately a case-by-case decision based on prior legal and market intelligence, including the patentee's enforcement history, the countries in which products are marketed, and the jurisdictions that are likely to offer the greatest strategic value to the patentee.

The opt-out rate has reportedly been declining as confidence in the UPC grows, but the picture is not uniform across sectors — pharmaceutical companies are said to have opted out at higher rates than the electronics industry. By 2030, do you expect the UPC to have become the default forum for high-value European patent disputes across all technology fields, or will national courts retain a structurally distinct role in specific sectors?

By 2030, I would expect the UPC to play an even larger role across technology sectors, including industries that have so far been comparatively cautious. At present, there is little indication that the UPC's transitional framework will be extended, and as confidence in the system continues to grow, it is reasonable to expect that more disputes from currently hesitant sectors will move into the UPC. In that sense, the UPC is clearly the forum of the future. That does not mean, however, that national courts will lose their significance. Forum-shopping considerations will remain important, national patents will continue to provide an independent basis for litigation, and national courts will remain a valuable complementary forum in many strategic situations.

Moreover, in areas such as FRAND disputes, the key questions are often not sector-specific but concern the substantive approach taken by individual courts. I therefore see the UPC becoming the leading forum for European patent litigation, but not replacing national courts, which are likely to retain a distinct and strategically important role within the broader European enforcement landscape.

Germany's bifurcation system — separating infringement and validity proceedings — has long been a driver of forum selection. The UPC combines both in a single proceeding. By 2030, do you expect bifurcation to have lost its strategic relevance in Europe, or will it persist as a differentiating factor for parties choosing between German national courts and the UPC?

I do not expect bifurcation to lose its strategic relevance by 2030. On the contrary, it is one of the reasons why German national courts are likely to remain an important complement to the UPC. While the UPC offers the benefits of a single forum for infringement and validity, German infringement proceedings can often reach judgment more quickly within a bifurcated system. As more cases migrate to the UPC, the workload of the German courts may also decrease, potentially allowing them to operate even more efficiently. For patentees, that could preserve one of the traditional attractions of German litigation: the possibility of obtaining injunctive relief before validity issues have been finally resolved. In that sense, bifurcation is likely to remain a meaningful factor in forum selection. The UPC may become the leading European patent court, but Germany's distinct procedural model will continue to offer strategic advantages that many litigants will be reluctant to forgo.

EPO opposition proceedings and UPC validity proceedings can run concurrently over the same patent. The UPC has discretion to stay infringement proceedings pending an EPO decision, but has been reluctant to do so. By 2030, do you expect a settled practice to have emerged on when the UPC will and will not stay proceedings, and what does the current uncertainty mean for litigation strategy?

By 2030, I would expect a more settled UPC practice on stays to emerge, but the current direction of travel suggests that the Court will continue to be relatively reluctant to suspend its own proceedings in favor of ongoing EPO opposition proceedings. That approach is consistent with both the structure of the UPC system and its ambition to establish itself as an independent and effective forum for patent validity disputes. As long as the UPC and the EPO operate in parallel, there will inevitably be a degree of institutional competition, and the UPC is unlikely to position itself as merely waiting for the EPO's assessment. For litigation strategy, the implications are clear. Parties should continue to pursue a dual-track approach and, where appropriate, litigate validity before both forums simultaneously. At least for the foreseeable future, a "who kills first" strategy will remain a central consideration for defendants. The race to secure the first meaningful validity decision, whether from the UPC or the EPO, is therefore likely to remain a defining feature of European patent litigation.

AI tools are increasingly used for prior art searches, claim mapping, and litigation analytics. By 2030, where do you expect AI to have had the most tangible impact on how patent litigation is actually conducted — in the preparation phase, in proceedings before the UPC, or in post-grant proceedings before the EPO?

I expect AI to have its greatest impact in the preparation phase, particularly in prior art searching, claim mapping, fact-gathering and the organization of large volumes of evidence. This is especially valuable in the UPC's front-loaded system, where parties must present highly developed cases from the outset. That said, AI is likely to become a standard tool across the entire lifecycle of a dispute, including UPC litigation and EPO opposition proceedings. By 2030, the real transformation will not be confined to a single stage of patent litigation but will lie in AI's ability to help litigants manage increasingly complex technical and evidentiary records more efficiently.

If you were to identify the single most important strategic adjustment that companies with significant European patent portfolios should make before 2030 — whether in litigation strategy, portfolio management, or licensing — what would it be?

If I had to identify a single strategic adjustment, it would be for companies to make a conscious and portfolio-wide decision on their UPC strategy before the end of the transitional period. The key question is whether there are patents that should remain outside the UPC system through opt-out, or whether the business is prepared to embrace the UPC as its primary enforcement forum. That decision should not be made patent by patent in isolation, but as part of a broader litigation and licensing strategy. At the same time, companies should decide whether they ultimately want to focus their enforcement efforts on the UPC or maintain a multi-forum approach that combines the UPC with national courts.

In our last interview, I asked you how it was to set up a new office. How would you take stock now, four years after the opening of Finnegan's Munich office in 2022?

I have been very fortunate throughout my career. Having the privilege to open a new office for Finnegan in Munich in 2022 together with the start of the UPC in 2023 were certainly both special highlights in my professional career. Because of the UPC’s increasing importance, I am very confident that Finnegan’s European practice will grow further. The opportunities we have are truly exceptional.

You have been the chair of the Global Patent Litigation FORUM since its inception in 2022? What makes this year's conference special and why should the patent litigation community join it?

This year's conference is special because of the attendance of 7 renowned judges. We have never had so many judges attending the conference and I am looking forward to informative and insightful discussions with those judges and the sophisticated audience.