After many years of doubts and uncertainty, the Unified Patent Court (UPC) has now entered the Provisional Application Period (PAP) and is expected to be operational as early as the second half of 2022.
It will be the most significant change to patent law in Europe in the last 40 years, which in due course is expected to establish an effective, centralised forum for enforcing and challenging patents in the participating Member States of the European Union.
HOW WILL THE UPC CHANGE THE CURRENT EUROPEAN PATENT SYSTEM?
Currently, a European patent becomes a bundle of national patents post-grant, and any enforcement claims must be brought before national courts and respective authorities.
These options pose a risk of conflicting decisions of the various national authorities, creating inconsistency and uncertainty for interested parties, be they patent owners or third parties. The Unified Patent Court aims to address these problems and provide a simpler and more efficient judicial system with one court having jurisdiction across all participating Member States.
The UPC will retain exclusive jurisdiction for claims relating to Unitary Patents, and will have competency (alongside the relevant national authority) to handle actions relating to European patents validated directly in the participating Member States, as well as supplementary protection certificates obtained from European patents, unless the relevant patent has been opted-out.
In due course after the opt-out period has ended, the UPC will have exclusive jurisdiction, among other things, for the following actions relating to all European patents validated in a participating Member State, whether via a national validation or Unitary Patent:
actions relating to actual or threatened infringement of patents and supplementary protection certificates
actions for declarations of non-infringement of patents and supplementary protection certificates
actions for provisional and protective measures, as well as actions for damages or compensation arising from such provisional protection
actions and counterclaims for revocation of patents and declarations of invalidity of supplementary protection certificates
HOW WILL THE UPC WORK?
The UPC is made up of a number of first instance divisions, with all appeals being handled centrally at the Court of Appeal based in Luxembourg. The first instance divisions can be:
Local Divisions handling actions arising in a particular country, for instance the Local Divisions in Austria, Denmark, France, Germany, Ireland, Italy, and the Netherlands
Regional Divisions handling actions arising in one of a number of countries, for instance the Nordic Regional Division in Stockholm handling actions arising in Sweden, Estonia, Lithuania and Latvia
Central Divisions currently located in Paris and Munich
Centres for mediation and arbitration in Ljubljana and Lisbon
The UPC Agreement prescribes the rules of where an action may be initiated and which particular court is competent to handle the case. For instance, an infringement action can be brought at the Local/Regional Division in the state the defendant is based or in any state where infringement is alleged to have taken place.
If there is no Local/Regional Division or if the defendant does not have a place of business in a Member State, the action can be brought at the Central Division. Conversely, the Central Division will hear all revocation actions (unless brought as a counterclaim to an infringement action) or actions for declaration of non-infringement, with the particular technical area determining which particular location of the Central Division has competence.
HOW WILL PATENT LITIGATION BE HANDLED BY THE UPC?
The structure of the court and procedural rules mean that it is possible that an infringement action and counterclaim for revocation may be heard separately, for instance with the infringement action being handled one at the Local Division and the counterclaim for revocation being handled at the Central Division.
However, there is flexibility meaning that the particular Divisions handling any first instance procedure will depend on the particular circumstances of that case.
Any infringing act that takes place across a number of Member States, or in a state different from where the defendant has their principle place of business, will provide the option to pick one of a number of forums for a Patentee to initiate an infringement action.
WHAT ARE THE COSTS OF USING THE UPC?
The fee structure for actions for infringement, declaration of non-infringement, compensation or damages at the UPC are proposed to have a fixed fee together with a variable fee dependent on the value of the case.
Other fees do not have the value based fee, but the proposed fee for a revocation action is notably significantly higher than the official fee of an EPO opposition. In view of this, the EPO opposition procedure is expected to remain a useful option to achieve central revocation even when the UPC comes into force.
For further information, please speak to your usual contact at Potter Clarkson, or email one of our dedicated UPC team.