The Unitary Patent and the Unified Patent Court

The Unified Patent Court

The Unified Patent Court (UPC)

Presently, national courts are responsible for infringement and/or invalidity actions relating to European patents in their respective territories, leading to parallel court procedures in case infringement takes place on a pan-European level. The Unified Patent Court (UPC) will be a court common to the participating EU countries aiming to provide a simpler and more efficient judicial system, with one court having jurisdiction across all EU countries that have ratified the UPC agreement for all European patents and Supplementary Protection Certificates (SPC) obtained based on European patents. The UPC will therefore issue judgments on the infringement and/or validity of European patents having effect throughout the EU countries participating in the UPC agreement.

The UPC will have exclusive jurisdiction over EP patents with unitary effect and for classic EP patents, although a 7-year transitional period (potentially extended by a further 7 years) has been foreseen during which classic EP patents may be litigated either before national courts or before the UPC, and may even be opted out of the exclusive jurisdiction of the UPC for their entire lifetime, such that they will continue to be litigated before national courts.

Structure of the UPC

The UPC will consist of a decentralised Court of First Instance, with local and regional divisions located in the contracting Member States (e.g. for Belgium: Brussels; for Germany: Düsseldorf, Mannheim, Munich and Hamburg), a central division (located in Paris with a section in Munich) and a common Court of Appeal (seated in Luxembourg). Infringement cases will be heard at the Local or Regional Division where the infringement occurred, or the Local or Regional Division where the Defendant (or one of them) is resident, or the Central Division if the Defendant is domiciled outside the EU. For revocation proceedings or declarations of non-infringement, the cases will be heard at the Central Division, or the division where existing infringement proceedings are pending if applicable. The Registry will be set up at the seat of the Court of Appeal. A training centre for judges will be located in Budapest; the patent mediation and arbitration centre will be located in Lisbon and Ljubljana. The UPC panels will sit in a multinational composition and consist of both legally and technically qualified patent judges. The procedure is designed in a way that judgments at first instance can be expected within approximately one year of filing the action. Parties may be represented before the UPC by lawyers authorised to practise before national courts of the contracting member states, but also by European Patent Attorneys who have obtained the European Patent Litigation Certificate or another appropriate qualification. The patent attorneys of DCP will thus also be able to assist parties in these matters.

Competence of the UPC

According to Article 32 of the UPC Agreement, the UPC shall have exclusive competence in respect of:

(a) actions for actual or threatened infringements of patents and supplementary protection certificates and related defences, including counterclaims concerning licences;

(b) actions for declarations of non-infringement of patents and supplementary protection certificates;

(c) actions for provisional and protective measures and injunctions;

(d) actions for revocation of patents and for declaration of invalidity of supplementary protection certificates;

(e) counterclaims for revocation of patents and for declaration of invalidity of supplementary protection certificates;

(f) actions for damages or compensation derived from the provisional protection conferred by a published European patent application;

(g) actions relating to the use of the invention prior to the granting of the patent or to the right based on prior use of the invention;

(h) actions for compensation for licences on the basis of Article 8 of Regulation (EU) No 1257/2012; and

(i) actions concerning decisions of the European Patent Office in carrying out the tasks referred to in Article 9 of Regulation (EU) No 1257/2012.

Any actions relating to patents and supplementary protection certificates which do not come within the exclusive competence of the UPC will remain within the competence of national courts.

Opt-out possibility

For a transitional period of seven years, which may be prolonged by up to a further seven years, the following options will be possible for litigation involving classic European patents: Actions for infringement or for revocation may still be brought before national courts (Article 83(1) of the UPC Agreement). Moreover, a proprietor of or an applicant for a European patent granted or applied for before the end of the transitional period will be able to opt-out of the UPC's exclusive competence in respect of that European patent or application for the entire lifetime of the patent, unless an action has already been brought before the UPC. To do this, the patent proprietor will have to notify an opt-out to the Registry of the UPC. It will be possible to withdraw any such opt-out at any time, unless an action has already been brought before a national court. It will not be possible to opt-out for a second time after an opt-out withdrawal. A single request opting out more than one patent (“bulk” opt-out) will be possible. There will be no official fee for opting out.

A sunrise period for opting out in respect of classic European patents and European patent applications is planned January 1st, 2023 according to the latest news published  by the UPC Preparatory team (implementation roadmap that depicts the key activities and January milestones of the UPC in the coming month), which is three months before the UPC becomes operational. The Court would be opening its doors and starting to receive cases as from April 1st, 2023.

The competence of the UPC and national courts during and after the transitional will thus be as follows:

Therefore, if you desire to opt-out one or more of your granted patents, you should do so during the sunrise period.

Once the UPC has started, you may wish to prevent that “classic” EP patents granted in the future on your pending EP applications will falls within the competence of the UPC. To do so, you will want to opt-out the pending application prior to grant. Even though opting-out will also be possible after grant, this entails the risk that a third party files a central revocation action at the UPC before you request the opt-out or before the opt-out becomes effective.

One possible moment to consider your preferences and request an opt-out for your pending applications could be at the pre-grant (Rule 71(3) EPC communication) stage, but in any event one must act before the end of the 7 (+7) year transitional period which allows to request an opt-out ends. While the end of the transitional period is not a pressing concern now, it will become an important consideration as we approach April 1, 2030 (or April 1, 2037).

We at De Clercq & Partners can assist you to lodge applications for opt-out, including “bulk” opt-outs.

Considerations that might influence your decision to go for a UP protection and/or UPC litigation

The best route for each of your patents should be evaluated on a case-by-case basis, your decisions will be governed by your individual patent strategy. Your patent portfolio may need to be reviewed: for instance, the value of your current and future products will need to be evaluated, the possibilities of third party-attacks should be studied, co-ownership agreements and licensing agreements will need to be checked, budgets should be planned.

While the analysis will always be case-specific, certain advantages and disadvantages that may influence your decision can be envisaged.

Pros

  • Cost advantage
    • For parties interested in Europe-wide validation
    • For litigation (compared to multiple national litigations)
  • Simplified administration
  • Specialised judges
  • Speed of judicial decision
  • May have an influence on a point of law that is currently unfavorable in national courts around Europe
  • Reduced cross-border issues
  • English will be available in most divisions – also BE

Cons

  • Not possible to downsize patent territory after decision to pursue a Unitary Patent
  • Risk of one negative decision for all countries
  • New court - uncertainty about the quality of decision in early phase
  • Central revocation action possible even after EPO opposition period has expired

The above explanations are for information purposes only and must not be taken as a definitive statement of the law or practice. Please also check out our general guidance under the seperate tab here or send an email to info@dcp-ip.com.

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