Unified Patent Court – Frequently Asked Questions
What is the Unified Patent Court?
The Unified Patent Court (UPC) will be a new court system with exclusive jurisdiction over Unitary Patents and the national validations of granted European Patents in the participating countries. However, the exclusive jurisdiction over national validations will not start immediately. There will be an initial seven year transitional period during which national validations can be litigated in either the national courts or the UPC, and during which the national validations of a granted European Patent can be opted out of the UPC’s jurisdiction entirely for the life of the patent.
When will the Unified Patent Court begin hearing cases?
The Unified Patent Court will open its doors for litigants once the Unified Patent Court Agreement (UPCA) has come into force. Germany is expected to deposit its instrument of ratification of the UPCA once it is clear when the UPC will be functional and this step could happen as early as the end of June 2022. The UPCA will come into force on the first day of the fourth month after German ratification. This could be as early as 1 October 2022.
Where will the UPC be?
The UPC agreement sets out that it will have a central division currently located in Paris, Munich and London and also local/regional divisions across the EU. Following the UK Government’s withdrawal of its UPC ratification, it is expected that the central division intended to be in London will be relocated, possibly to Italy or the Netherlands. At present, 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.
Can I choose which division of the UPC to sue in?
The division of the UPC where an infringement action can be brought depends on the location of the defendant or infringement and the technology sector. An infringement action can be brought at the local/regional division in the country the defendant is based or in any country where infringement has taken place. If there is no local/regional division in the relevant country, the action can be brought at the central division. In many cases, different infringing acts may occur in different EU countries, which will in practice give a patentee a choice of which division of the UPC to bring the action in. The central division will hear all revocation actions or actions for declarations of non-infringement. The central division based in London was due to handle chemical and life sciences cases, the central division based in Munich will handle mechanical engineering cases and the central division based in Paris will handle other cases including software and physics.
Will infringement and validity actions be heard together?
If a revocation action is initiated before the central division, then the patentee can either counterclaim for infringement before the central division (in which case infringement and validity will be heard together) or before the relevant local division (in which case infringement and validity will be considered separately, unless the local division refers the counterclaim to the central division). If an infringement action is initiated before a local/regional division and invalidity is counterclaimed, the local/regional division has three options: 1) proceed with both infringement and validity; 2) proceed with the infringement action and refer the counterclaim for invalidity to the central division; or 3) refer both infringement and validity to the central division. It will only become clear whether local/regional divisions will refer any part of an action once the system is operating.
What language will proceedings be in?
The language of proceedings in a local/regional division will be one of the official languages of the local/regional division. All local/regional divisions have selected English as an official language. It may, though, be possible to switch to the language in which the patent was granted (either English, German or French). The language of proceedings in the central division will be the language in which the patent was granted. For the Court of Appeal, the language of proceedings will be the language of the first instance proceedings or, on agreement of the parties, the language in which the patent was granted.
Who will judge at the UPC?
The UPC will be judged by patent judges of the participating countries. A panel of three judges will generally preside over each first instance case and the panel will be composed of at least one judge from the country in which the action is brought. The panel will contain three legally qualified judges or two legally qualified judges and one technically qualified judge, depending on the type and location of the action. Five judges from different participating countries will preside over Appeals.
How do I opt out of the UPC?
Opting out merely requires filing a request to the UPC, assuming no litigation has started in the UPC already. There is no official fee payable. The applicant(s)/proprietor(s) of the European Patent (i.e. all the national validations in the participating countries) or their patent attorney can make the request. An opt out must be authorised by all of the applicant(s)/proprietor(s).
Why would I want to opt out of the UPC?
Under the jurisdiction of the UPC, there is a threat of central revocation. Generally speaking, absent other considerations, filing an opt out appears to give patentees most flexibility whilst minimising risk. There is always the possibility of opting back into the jurisdiction of the UPC for enforcement, but in the meantime for an opted out patent there is no threat of a central revocation action being initiated at the UPC.
Can I change my mind about opting in or out of the UPC?
If you opt out, you can withdraw the opt out at any time assuming no litigation has started in the national courts already. However, once an opt out has been withdrawn it will not be possible to opt out again.
Why would I not want to opt out of the UPC?
Many people are taking the view that there is little disadvantage to initially opting out their entire patent portfolio, on the basis that they can always opt back in later, for example to bring an infringement action at the UPC. However, reasons for not opting out at all include the administrative and cost burden of doing so and perhaps an interest in developing the case law of the UPC.
When will I have to decide to opt out of the UPC?
During an initial 7 year transitional period, you can opt out at any time after publication of a European Patent application or after grant of a European Patent application, unless litigation in relation to the patent (any national validation) has already been brought before the UPC. It will not be possible to opt out after the end of the transitional period.
Do I need to use a local representative from the country of the relevant local, regional or central division in an action at the UPC?
No. Any suitably qualified UPC representative can represent parties in any of the divisions and at the Court of Appeal.