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Jurisdiction and structure of the Unified Patent Court

Jurisdiction

Unitary Patents can only be litigated in the Unified Patent Court. A single action will be used to enforce the patent against an alleged infringer in all of the UPC participating countries. This may lead to a single injunction across all the UPC participating countries. Equally, a single action can be used to revoke a Unitary Patent in all UPC participating countries.

Where Unitary Patent protection is selected there is no option to opt out of the Unified Patent Court. By selecting a Unitary Patent, the proprietor is in effect positively choosing to use the new Unified Patent Court.

The Unified Patent Court also has jurisdiction over European Patents validated in UPC participating countries unless the European Patent has been proactively opted out. Opting out is only available for national validations of a European Patent, and is not an option for a Unitary Patent. The ability to opt out European Patents validated in UPC participating countries will cease after a transition period, initially set at 7 years.

National courts will have exclusive jurisdiction over national validations of European patents which have been opted out of the UPC and for national validations in countries not participating in the UPC.

Structure of the Unified Patent Court

The Unified Patent Court will comprise a Court of First Instance and a Court of Appeal. The Court of First Instance will comprise a central division and local or regional divisions. Local divisions will have responsibility for actions brought in respect of infringement in individual participating countries. Regional divisions will have similar responsibility, but for a number of participating countries. Local divisions have been confirmed in Germany, Italy, France, the Netherlands, Belgium, Finland, Denmark, Austria, Portugal and Slovenia. A Nordic-Baltic regional division based in Stockholm has also been confirmed, covering Sweden, Lithuania, Estonia and Latvia.

The central division was originally due to be split between the United Kingdom, France and Germany. The headquarters of the central division will be in Paris. The Munich section of the central division will deal with patents relating to mechanical engineering.

The London section of the central division had been assigned patents relating to chemistry, pharmaceuticals, biotechnology and also human necessities, including medical devices. The allocation in these fields is currently undecided. The Paris section of the central division will deal with patents in all other fields, including electronics, software and physics.

Representation at the UPC

Any lawyer authorised to practice before a court of a participating country and any suitably qualified European Patent Attorney (including attorneys from all offices of J A Kemp) may represent a party before any division and the Court of Appeal of the UPC.

Responsibility of local and central divisions

The local (and regional) divisions and the central division will have separate responsibilities. Any action for infringement will generally be brought before a local or regional division. If the defendant counter-claims for invalidity, the local or regional division may also hear the invalidity action.

By way of exception from this general rule, infringement actions can be brought before the central division if (a) the parties agree or (b) the defendant does not have a place of business in any UPC participating country.

To challenge the validity of a patent at the UPC, other than as a counterclaim in an infringement action, it will be necessary to bring an action at the central division. An action seeking a declaration of non-infringement must also be brought at the central division.

Where Actions can be Brought

Claimants must bring infringement actions in the local/regional division where the actual or threatened infringement has occurred or may occur, or the local/regional division where the defendant has its residence or principal place of business. If the defendant has no residence or place of business in a participating country, then the claimant may bring an action either where the infringement occurred or, if the participating country has no local or regional division, before the central division.

If a defendant in an infringement action files a counterclaim for revocation, the counterclaim must be brought in the local/regional division hearing the infringement action. The local/regional division may then either (a) proceed with a single action which considers both infringement and validity, (b) refer the counterclaim for revocation to the central division and either suspend or proceed with the action for infringement or (c) refer the entire case to the central division.

If an action for revocation is pending before the central division, then an action for infringement between the same parties relating to the same patent may be brought in the local/regional division, where the defendant has its place of business or where an infringement has taken place. Alternatively, under these circumstances, the infringement action can be brought in the central division.

If an action for a declaration of non-infringement is brought before the central division, the central division will stay the action if an infringement action between the same parties (or between an exclusive licensee of the patentee and the same defendant) relating to the same patent is brought before a local or regional division within 3 months of the date on which the action was initiated before the central division.

Notwithstanding all of the above discussion, parties may agree to bring any action before the division of their choice, including the central division.

Language

Local or regional divisions will hear cases either in one of the official languages of the host country or any other language designated by the division. All divisions have designated English. Further, the parties may agree, subject to approval by the court (or the court may decide, subject to the agreement of the parties), to hear the case in the language in which the patent was granted. One party may request that the case be heard in the language of the patent. In such a case the position of the defendant in particular must be taken into account.

The central division will hear cases in the language the patent concerned was granted.

The Court of Appeal, except in exceptional circumstances, will use the same language as used in the Court of First Instance, or the parties may agree to use the language in which the patent was granted.

Around 75% of European Patents are granted in English and so it seems likely that the majority of cases before the local, regional and central divisions of the UPC will be heard in English.

Applicable Law

Article 138 and 139 of the EPC will be the applicable law for validity. This is the same as the present situation.

The law for infringement will be national law of a participating country depending on the nationality or place of business of the first named applicant at the time of filing of the patent.

In practice, determining the law for infringement may not be of much significance. That is because the law in all EU countries ought to comply with Chapter II of the Community Patent Convention (CPC). The definition of infringement given in articles 25-28 of the Agreement for a Unified Patent Court (UPCA) corresponds almost word for word with that in the CPC. Further, the UPC is not bound by any national law precedent, so it will likely create its own case law and interpretation of what is the ‘original’ black letter law of infringement across Europe: the CPC, as repeated by the UPC Agreement.

The default law governing the patent as an object of property (i.e. the law governing assignment, licensing, mortgaging etc. of the patent) will be the same law as applies for infringement. However, the Rome I Regulation will apply here, which means that parties to a licence or co-ownership agreement will be free to choose themselves which law should apply to the agreement.

Appeals

Appeals to the Court of Appeal in Luxembourg are available as of right on (a) final decisions, (b) decisions which terminate proceedings as regards one of the parties and (c) decisions on certain types of orders including those relating to language, production of documents, preservation of evidence/inspection of premises, freezing orders, protective measures, and orders to communicate information.

Other types of orders may only be appealed together with the appeal against the final decision, or if the court grants leave to appeal on request by the appellant.

Appeals are to be based both on points of law and on matters of fact, but new facts and new evidence may only be introduced when the party introducing the new material could not reasonably have been expected to submit them during proceedings before the Court of First Instance.

Appeals against final decisions will cause that decision to be suspended, while appeals against interim orders made in pending cases will not stay the main proceedings, albeit that the Court of First Instance will not give a decision in the main proceedings before a decision of the Court of Appeal on any in-suit applications.

The Court of Appeal may either overturn the decision of the Court of First Instance and give a final decision, or refer the case back to the Court of First Instance.