Unified Patent Court (UPC)
The current system in Europe provides for national courts and authorities in different European countries to make their own individual decisions on the infringement and validity of European patents. This will change with the introduction of the Unified Patent Court (UPC).
The UPC is an entirely new court system that will have jurisdiction to decide cases concerning European patents in all of the EPC states that have ratified the UPC Agreement – the UPC states. The UPC will be able to consider the infringement and validity of Unitary Patents (UP) and also traditional European patents that have not opted-out of the UPC.
The structure of the UPC ►
Jurisdiction of the UPC ►
Relationship with EPO opposition ►
Transitional period ►
The UPC will have:
The Court of First Instance will be composed of a Central Division (currently with seats in Paris and Munich), Local Divisions (that cover a single country) and Regional Divisions (that cover a group of countries).
Infringement actions can generally be brought in any of these Divisions, with cases being heard at the Local or Regional Division covering the country in which the infringement occurred or where
the Defendant is resident. Infringement cases may also be brought before the Central Division if the defendant resides somewhere not covered by a Local or Regional Division, e.g. outside the EU.
Invalidity actions and applications for declarations of non-infringement will be handled by the Central Division unless an infringement action has already been brought, in which case the Division handling the infringement action may also handle these further actions (at their discretion).
Each seat of the Central Division will deal with cases dependent on their subject-matter, based on IPC classifications. It is expected that cases relating to the subject-matter that was to be covered by the seat of the Central Division originally destined for London will be redistributed between the seats located in Munich and Paris, or to a new seat of the Central Division in a new location.
The Court of Appeal will be located in Luxembourg and will hear appeals from the Court of First Instance. The Registry will also be based in Luxembourg and will be responsible for administration of proceedings.
In addition, the Court of Justice for the European Union (CJEU) will have limited jurisdiction to hear questions on EU law referred to it by the Court of First Instance or the Court of Appeal.
UPs are under the exclusive jurisdiction of the UPC. This means that all actions concerning the infringement and validity of a UP must be brought before the UPC.
The UPC is also the default forum for hearing cases concerning conventionally validated European patents in the UP States. Specifically, cases concerning infringement and validity of existing and future European patents covering any of the UP states will be heard by the UPC even if the European patent is not explicitly registered as a UP. However, with effect for the duration of an initial transitional period, it will be possible to opt out these conventional European patents (but not those registered as UPs) from the jurisdiction of the UPC. If a European patent has been opted out of the UPC, any action must be brought before the national courts and not before the UPC.
During the transitional period, conventional European patents might be litigated either in the national courts or in the UPC (depending upon whether an opt out has been filed). Once an action is brought in either a national court or the UPC, the patent will thereafter remain in that sphere and cannot be litigated in the alternative court. This is known as “pinning” the patent to the respective court system. For example, if an action is brought in a national court, a further action cannot be brought before the UPC, therefore any actions in different countries must be brought before the relevant national courts (as is currently the situation). This persists for the lifetime of the patent.
It is also noteworthy that the UPC will have jurisdiction to decide on issues relating to SPCs based on European patents covered by the UPC.
The EPO opposition procedure will remain in place for European patents regardless of whether or not they are UPs. Therefore, UPs can still be opposed as normal during the 9 months following grant of the European patent. We expect this to remain a popular option, as it will continue to be cost-effective and will affect the patent in all states that the patent is validated in (including those not covered by the UP).
Central revocation via the UPC is nonetheless quite a powerful addition to the EPO opposition procedure, as an action for invalidity can be brought at the UPC at any time, and not just in the 9 months following grant. A centralised attack on the validity of a European patent, at least across all UPC states, will therefore become possible via the UPC for the lifetime of the patent (unless a patent is opted out).
Decisions of the UPC will have effect across all UPC states covered by a patent. In the case of a UP, this will be across all of the (initially 17) UPC states.
Discovery and disclosure provisions are strictly limited. Interlocutory injunctions will be available, as will saisie, or seizure orders, in some circumstances.
Case management is flexible, but geared towards comprehensive written submissions. The proceedings will be quick and efficient in comparison to some other forums, with a firm expectation that cases should be concluded within one year of an action being brought.
The UPC will be able to grant injunctions with effect across all UPC states covered by a patent. Awards of damages can take account of activities in all these states and, subject to various legal limitations and defences, activities beyond these states.
The UPC will hear issues concerning licences and ownership only when raised as a defence to an infringement action. It remains unclear as to whether it will have the freedom to stipulate licence terms, e.g. under FRAND provisions.
Any decision that a patent is invalid will have effect in all UPC states covered by the patent, and this aspect of often referred to as “central revocation”.
The transitional period will last for a minimum of 7 years (and a maximum of 14 years) starting from the date of commencement of the UPC. Following this, various changes will be implemented. For example, following the transitional period, it will no longer be possible to opt out conventional European patents from the jurisdictions of the UPC.