Unified Patent Court

A new Unified Patent Court (UPC) will be established across all participating states to hear both Unitary Patent (UP) and traditional European Patent (EP) cases.

Although there will be multiple locations and divisions of the court, the UPC will be able to give judgements with binding effect throughout all participating states.

The UPC Agreement that establishes the court has been signed by all participating states of the UP system except Poland, and is in the process of ratification.

Jurisdiction

The UPC will have exclusive jurisdiction for litigation relating to UPs.

During a transitional period of between 7 and 14 years, non-unitary European Patents (EPs) and supplementary protections certificates (SPCs) will be subject to both the jurisdiction of national courts, and the jurisdiction of the UPC.

During the transitional period, patentees will be able to “opt-out” their non-unitary European patents and applications from coming under the jurisdiction of the UPC, in which case actions must be brought before the national courts (as currently).

After the transitional period, the UPC will have exclusive jurisdiction in UP states for non-unitary EPs and SPCs that were not previously opted-out.

Court structure and locations

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 and local or regional divisions serving one or more individual member states. The central division will have its seat in Paris and sections in London and Munich.

As of May 2016, a regional division has been announced for Stockholm to serve Estonia, Latvia, Lithuania and Sweden. Local divisions have been announced for Vienna, Brussels, Copenhagen, Paris, Dusseldorf, Hamburg, Mannheim, Munich, Dublin, London, Helsinki, The Hague, Lisbon and Milan. Cases before the CFI will generally be heard before a multinational panel of three or four judges, depending on whether only infringement, or infringement and validity, are at issue.

The CA will be loc ated in Luxembourg and cases before the CA will generally be heard before a multinational 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.

Bringing an action

The location where an action can be brought will depend on the nature of the action, and the location of the defendant or any alleged infringement.

Actions relating to infringement may be brought before a local/regional division in which infringement occurs or where the defendant is based. Such actions may also be brought before the Central Division if the infringement occurs in a country having no local/regional division, if the defendant is based outside of the UP states or if the parties so agree. 

Actions for declarations of non-infringement and actions for revocation, on the other hand, must be brought before the Central Division. The language of proceedings will usually be the local language of the local/regional division hearing the case, or the language of the patent.

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 (c) refer the case for decision to the central division on agreement of the parties. Therefore, it is possible for “bifurcation” to 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 particular 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 considerations are outlined in our section on the decisions to be made by patentees in view of the forthcoming UP system.

When will it come into force?

The main hurdle before the UP system comes into effect is the ratification of the UPC Agreement. The ratification process is currently underway. 13 states are required to ratify, and these must include the UK, France and Germany. Progress of the ratification process will be updated, together with our ratification map, here.

Please also refer to our timeline for the UPC and our discussion of the decisions to be made by patentees in view of the forthcoming UP system.

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