The Court of Appeal (CoA) of the Unified Patent Court (UPC) ruled that if a party wishes to appeal against a procedural order, and leave to appeal has not already been granted in the order, the party must first apply to the Court of First Instance for leave to appeal. Only if such an application is rejected is it then possible to request a discretionary review by the CoA (pursuant to Rule 220.3 of the UPC Rules of Procedure (RoP)). Suinno Mobile & AI Technologies Licensing Oy v. Microsoft Corporation (_586/2024, APL_ 54732/2024) (UPC CoA Oct. 9, 2024) (Simonsson, Standing J.)

In the proceedings between Suinno and Microsoft before the UPC Central Division Paris (Court of First Instance in these proceedings), the latter ordered the claimant, Suinno, to provide security for costs. There was no indication in the order that it could be appealed.

Suinno did not request that the Court of First Instance grant leave to appeal, but instead directly lodged a request for discretionary review of the order with the CoA.

The CoA deemed this request inadmissible and dismissed the appeal. The standing judge (see Rules 345.5 and .8 of the RoP) noted that the Court of First Instance had neither granted nor denied leave to appeal and the first instance order did not contain any reference to Article 73 of the Agreement on a Unified Patent Court (UPCA) and Rule 220.2 of the RoP, contrary to Rule 158.3 of the RoP.

However, this did not relieve Suinno from its obligation to request a grant of leave to appeal from the Court of First Instance. Absent an express grant or refusal of a grant, there is no implied grant of leave to appeal, notwithstanding that the Court of First Instance did not mention the possibility of requesting leave to appeal. The CoA cited Rule 158 of the RoP but noted that the absence of the indication referring to Article 73 of the UPCA and Rule 220.2 of the RoP cannot be understood as an implied grant.

Practice Note: A discretionary review by the CoA pursuant to Rule 220.3 of the RoP is only permissible if the Court of First Instance has expressly granted or expressly refused to grant leave to appeal, which is in line with other CoA decisions on this issue (See, e.g., CoA, Order of August 21, 2024; UPC_CoA_454/2024, APL_44552/2024, para 21; Order of October 15, 2024, CoA_UPC 01/2024, ORD_41423/2024 in the main proceedings ACT_588685/2023, UPC_CFI_440/2023, para 6).

Even if, contrary to the RoP, a first instance decision of the UPC does not contain any indication that an appeal may be filed in accordance with the UPCA and the RoP (but is silent on the issue of appeal in general), there is no positive effect for a party wishing to appeal the decision; it is still necessary to request a grant of leave to appeal from the Court of First Instance. Only in case of a refusal can the application for discretionary review be filed with the CoA.