Unitary Patent Information Series (Article 3) - The Unified Patent Court

31 July 2013

The Unified Patent Court

The third article in our Unitary Patent Information series looks at the Unified Patent Court and how it is set to work:

A new Unified Patent court (UPC) will be established across all participating states to hear both Unitary Patent (UP) and conventional European Patent (EP) cases. Although there will be multiple locations and divisions, the UPC will be able to give judgements with binding effect throughout all participating states. Like the national courts, the UPC will be obliged to respect EU law and must cooperate with the Court of Justice of the European Union (i.e. it will be subject to the same obligations under EU law as any national court of the member states). The UPC Agreement has been signed by all the participating states of the Unitary Patent except Poland. It has also been signed by Italy, which is not a participating state because it has not signed up to the UP Regulation. The UPC Agreement includes a lot of information about how the UPC will function and so we have a good idea at this stage of the basic principles and procedures it will use.

How will it work?

The UPC will have exclusive jurisdiction for litigation relating to UPs. After a transitional period of between 7 and 14 years, it will also have exclusive jurisdiction in participating states for non-unitary European patents and supplementary protection certificates. (During the transitional period, patentees will be able to “opt-out” their non-unitary EP patents from coming under the jurisdiction of the UPC, in which case actions must be brought before the national courts as is currently the case – further information on the transitional period will be published later in the series.

The UPC will comprise a Court of First Instance (CFI) and a Court of Appeal (CA). The CFI will be composed of a central division (with seat in Paris and two sections in London and Munich) and local (or regional) divisions in individual member states (a regional division being one that serves more than one State). Cases before the CFI will generally be heard before a panel of three judges. The CA will be located in Luxembourg and cases before the CA will generally be heard by a panel of five judges. The UPC Agreement also establishes a patent mediation and arbitration centre which will have seats in Ljubljana and Lisbon.

The three CFI central division locations of Paris, London and Munich will divide work according to technical specialisation. London will handle cases involving chemistry and pharmaceuticals, metallurgy, and human necessities (including medical devices). Munich will deal with cases involving mechanical engineering, and Paris will deal with all other matters, including cases involving electronics, computer science and physics.

Where an action can be brought will depend on the nature of the action, and the location of the defendant or the alleged infringement (if applicable). Infringement actions, actions for injunctions, for damages derived from provisional protection and actions in relation to prior use, against foreign defendants, can be brought either before the local/regional division in which infringement occurred, in the local language of that division or the language of the patent, or before the Central Division in the language of the patent. Such actions against European defendants will take place at the local/regional division in which infringement occurred or where the defendant is domiciled, in the local language of the division or the language of the patent. If the state concerned does not host a local division
and does not participate in a regional division, actions shall be brought before the central division (in the patent language). Actions for declarations
of non-infringement and actions for revocation, on the other hand, must be brought before the Central Division, in the language of the
patent concerned.

In the case of counterclaims for revocation, a local or regional division will have the discretion to (a) proceed with both the infringement action and the counterclaim; (b) refer the counterclaim to the Central Division and suspend or proceed with the infringement action; or, with the agreement of the parties, (c)refer the case for decision to the central division. Thus the possibility for “bifurcation” will arise, in which a local or regional division hears infringement and the central division hears revocation, potentially in different languages.

The various options for where and when an action can be brought will almost certainly have differing tactical implications depending on the nature of the articular situation. It is difficult to predict what these might be before it is seen how the UPC actually operates in practice, but some of the most important possibilities and considerations will be outlined over the coming articles.

Next steps

The UPC Agreement was approved by the European Parliament on 19 February 2013 but it will not enter into force until it has been ratified by at least 13 Member States (which must include Germany, France and the United Kingdom). In the meantime, a Preparatory Committee of the Council of Europe has been charged with creating a roadmap to make the UPC a reality.

  

For further information or should you have any queries, please contact one of our experts from the panel on the right hand side of the
page.

The next article in the series will look at the translation arrangements.

Our Experts
David O'Connell
David O'Connell
Location: Bristol (UK) The Netherlands (NL)
Robert Margue
Robert Margue
Location: Munich (Germany)

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