The Unified Patent Court (UPC) will be a single court system in which patent matters can be heard for all participating Member States, i.e. all European Union Members States except Croatia, Spain and Poland (although Croatia is expected to join the scheme later).
The UPC will have exclusive jurisdiction from the outset over Unitary Patents and, after a seven-year transitional period (which may be extended to fourteen years), also over traditional European patents having effect in participating Members States. During the transitional period claimants will, however, be able to choose to take actions relating to such traditional European patents before either the UPC or a national court.
Where will the UPC be located?
The UPC will have a number of Courts of First Instance consisting of Central, Local and Regional Divisions in various locations, as well as a Court of Appeal in Luxembourg. The Central Division will be based in Paris, London and Munich, while Local Divisions are currently planned for London, Düsseldorf, Munich, Mannheim, Hamburg, Paris, The Hague, Brussels, Milan, Helsinki, Copenhagen, Dublin and Vienna. A Nordic-Baltic Regional Division is expected to cover Sweden, Lithuania, Estonia and Latvia.
Is it possible to choose where to initiate proceedings?
A patentee may bring an infringement action in the Local or Regional Division where infringement occurs, or where the defendant resides or has a place of business. If there is no Local or Regional Division in the relevant state, the action can be brought at the Central Division. Similarly, defendants from outside the European Union may also be sued for infringement at the Central Division.
In contrast, all revocation actions and declarations of non-infringement (other than counterclaims) must be dealt with by the Central Division, with the London seat handling chemistry and biotechnology cases, the Munich seat handling mechanical engineering cases, and the Paris seat handling other cases including electronics.
Are infringement and validity actions likely to be split, i.e. will bifurcation happen?
Prevailing opinion suggests that UPC judges would prefer to hear infringement and validity actions together, and so bifurcation is considered highly unlikely to occur.
If an infringement action is initiated before a Local or Regional Division and there is a counterclaim for revocation, the Local or Regional Division has four options:
-Hear both sides of the case
-Proceed with the infringement
action and refer the counterclaim for revocation to the Central Division
-Refer the counterclaim for revocation
to the Central Division and stay the infringement action (probably only when there is a “high likelihood” of the relevant claims being found invalid)
-Refer the entire case to the Central Division
, provided the parties agree.
Is it possible to exclude existing traditional European patents from the jurisdiction of the UPC?
Yes, providing no action is or has been pending before the UPC. An opt-out request may be filed which excludes UPC jurisdiction completely for the traditional European patent that is the subject of the request. No official fee will be payable.
What benefit is there to opting out of the jurisdiction of the UPC?
Opting a traditional European patent having effect in participating Members States out of UPC jurisdiction prevents a central attack on the validity of the patent, i.e. prevents the initiation of a single request for revocation at the UPC.
Is it possible to opt back into the jurisdiction of the UPC?
An opt-out request can be withdrawn, i.e. it is possible to opt back in, at any time, provided that no action in a national court has ever been pending, including actions that were finished before the UPC came into effect. However, once an opt-out has been withdrawn it will not be possible to opt out again.
Is there any reason not to opt traditional European patents out of the UPC?
On the face of it there appears to be little disadvantage to initially opting out a traditional European patent from UPC jurisdiction, particularly given that it can be opted back in later, e.g. to allow the launch of a single, centralised infringement action at the UPC. Nevertheless, there may be an administrative and cost burden associated with opting out, or an interest, e.g. in certain industries, in ensuring the development of good case law in the UPC.
Is there a deadline for opting out of the UPC?
Proprietors of traditional European patents having effect in participating Member States will be able to register an opt-out at any time up to one month before expiry of the seven-year transitional period (unless an action is or has been pending before the UPC), or during a sunrise period before the UPC becomes operational.
A benefit of registering an opt-out during the sunrise period is that it becomes effective immediately on commencement of the UPC’s operations.
When is the UPC expected to become operational?
The Unified Patent Court Agreement, which gives rise to the UPC, requires ratification by thirteen Member States, including the United Kingdom, France and Germany. Such ratification is expected to be completed by the first quarter of 2018
which will enable the UPC to become operational in the second quarter of 2018. In such circumstances the sunrise period is expected to start sometime in the first quarter 2018.
Who can help?