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Law \ Legal

What Is The Unified Patent Court (UPC)? – Patent


The Unified Patent Court (UPC) is a new court in which
traditional European patents (EP) and the new unitary patents (UP)
may be litigated.

By default, once the Unified Patent Court Agreement becomes
effective, Unitary Patents and European patents will be under the
jurisdiction of the Unified Patent Court and the relevant national
courts. This includes any European Patents already in force (and
validated in a Unified Patent Court contracting state) on the date
which the Unified Patent Court Agreement becomes effective.

See our FAQ about the Unitary Patent

What patents fall under the jurisdiction of the Unified Patent
Court?

Unitary Patents can only be litigated in the Unified Patent
Court.

When the new system begins, European patents (EPs) will also
automatically fall under the jurisdiction of the Unified Patent
Court, but can be “opted out” (See below section on
Opting Out) in which case they will be under the jurisdiction of
national courts only (as before). Those EPs that are not opted out
can be litigated either in the UPC or in relevant national
courts.

European patents can continue to be validated in the UK and
other states that are not part of the system (e.g. Spain,
Switzerland, Poland) and continue to be enforced in the national
courts of those states.

When will the Unified Patent Court begin?

The next milestone will be reached when Germany ratifies the
Unified Patent Court agreement. This is expected to happen in June
2022, in which case the system will officially start on 1 October
2022; however, delays are possible.

Where is the Unified Patent Court?

The Unified Patent Court is split into a number of
divisions.

There will be Local Divisions in Unified Patent Court
contracting states (e.g., Local Divisions in Austria, Belgium,
Denmark, France, German, Italy, and Netherlands) and Regional
Divisions (e.g., the Nordic-Baltic regional division comprising
Sweden, Estonia, Latvia, and Lithuania).

A Central Division will have seats in Paris, Munich and one
further location (to be confirmed). The Paris seat will hear cases
from sections B, D, E, G and H of the International Patent
Classification (which include physics and electronics). The Munich
seat will hear cases on patents in IPC section F (mechanical
engineering, lighting, heating). Cases relating to patents in IPC
sections A and C (human necessities, chemistry and metallurgy) will
be allocated for the time being to one of these sections.

The Central, Regional, and Local divisions will form the Court
of First Instance, and a Court of Appeal (based in Luxembourg) will
hear appeals therefrom. There will be no further appeal from the
Court of Appeal.

Litigation in the Unified Patent Court will be presided by a
panel of three judges: two legal judges and one technical judge.
Appeals will be presided by a panel of five judges.

What are the language(s) of proceedings of the Unified Patent
Court?

The Central Division and Court of Appeal will hear cases in the
language in which the patent was granted (i.e. one of English,
German or French) or, in the Court of Appeal, the language of the
first instance proceedings.

Proceedings before the Regional and Local divisions may be in a
local official language. For example, the Local Division in Denmark
plans to use Danish and English. The patentee may have to provide a
translation of the patent into a local official language for
proceedings before a Regional/Local division.

Do I get to choose the court?

The division of the Unified Patent Court in which an action
should be brought is dependent upon the location of the defendant
or alleged infringer. Actions should be brought in the state in
which they are based, assuming that said state has a Local or
Regional division. If it does not, then the action is brought at
the court of the Central Division which covers the relevant
technical area.

Actions for revocation or declaration of non-infringement will
be heard by the Central Division.

Can I enforce my Unitary Patent at a national court instead of
Unified Patent Court?

No, the Unified Patent Court has exclusive jurisdiction over
Unitary Patents.

What is “opting out” of an European patent or
European patent application?

Once the Unified Patent Court Agreement becomes effective,
“traditional” European patents will be under the parallel
jurisdictions of the Unified Patent Court and the relevant national
courts. This includes any European Patents already in force (and
validated in a Unified Patent Court contracting state) on the date
which the Unified Patent Court Agreement becomes effective.

It is possible to file an “opt-out” request to prevent
this from happening. Upon grant of the request, the specified
European patents and European patent applications (after they are
granted) will be under the jurisdiction of the relevant national
courts only, in line with the present system for litigation in
Europe.

Opting out is not possible for Unitary Patents, which by
definition are under the sole jurisdiction of the Unified Patent
Court.

What are some of the advantages of the Unified Patent
Court?

  • A patent can be centrally enforced over multiple jurisdictions
    across the EU*

  • Injunctions, inspection orders, and other remedies are
    available over said multiple jurisdictions.

  • A patentee can bring an action against an infringer in his
    country of residence or in any state where he is selling or even
    any state where sale is threatened. This ability to choose your
    battleground is also known as “Forum shopping”.

*Up to 24 of the 27 EU states; 17 at the commencement of the
Unified Patent Court.

See Unitary Patent participating states

What are some of the disadvantages of the Unified Patent
Court?

  • A Patent subject to the jurisdiction of the Unified Patent
    Court is vulnerable to central revocation at any time during the
    life of the patent.

  • The Unified Patent Court is as yet untried and uncertain.
    Processes in the court are unknown. It is also unknown if the court
    will be patentee friendly (or perceived to be) or otherwise. There
    is only one level of appeal. Patentees may prefer not to place
    their most valuable (or most vulnerable) patents in the hands of a
    court with no track record.

Should I opt out a European patent, or do nothing?

By opting out, one avoids the risk of central revocation of a
European patent before the Unified Patent Court. One can rarely be
certain that a patent is new and inventive and free from challenge.
Maintaining a European patent under the current European litigation
system means that a third party would be required to initiate
invalidity actions at each of the relevant national courts.
Litigation costs at the Unified Patent Court are likely to be
higher than in a single national court, but come with the reward of
a judgment enforceable in all contracting states. Additionally, the
functioning of the Unified Patent Court is currently uncertain and
procedure will take time to be established.

By not opting out and thus allowing possible joint jurisdiction
of the Unified Patent Court and relevant national courts, it leaves
forum-shopping options open to the patent owner whether to
centrally enforce an European patent at the Unified Patent Court
(across all Unified Patent Court contracting member states in which
the European patent is validated), or before preferred national
court(s).

Is the opt-out permanent?

Upon acceptance of an opt-out request, it will be effective for
the lifetime of the European patent (even after the end of the
transitional period).

It will be possible to withdraw a request for opting out a
patent, and thus “opt back into” the Unified Patent
Court, as long as no actions have been brought in a national court
in relation to the relevant European patent. However, once the
opt-out is withdrawn, it will not be possible to opt out again.

When can an opt-out request be filed?

An opt-out request can be filed from the start of the Unified
Patent Court “sunrise period”. This sunrise period is
expected to span three months before the Unified Patent Court
begins. (If Germany ratifies the Unified Patent Court Agreement in
June 2022, the sunrise period should start on 1 July 2022 before
the Unified Patent Court enters into force on 1 October 2022.)

By opting out in the sunrise period, this ensures that a
European patent or European patent application is already opted out
by the time the Unified Patent Court begins hearing cases. If an
action is brought in the Unified Patent Court against a case before
it is opted out of Unified Patent Court jurisdiction, it will no
longer be possible to do so afterwards.

The possibility of opting out will remain available until one
month before the end of a “transitional period” of at
least seven years, from entry into force of the Unified Patent
Court Agreement.

How do I make an opt-out request?

Once the Unified Patent Court Agreement becomes effective,
opt-out requests must be filed at the Unified Patent Court Registry
using the Court’s online case management tool. During the
“sunrise period” (a three-month period up to the date the
Unified Patent Court Agreement becomes effective) opt-out requests
may be filed with the EPO.

Who can file an opt-out request?

The owner of a European patent or the applicant for a published
application for a European patent may file an opt-out directly or
through a Court-recognized representative. The true owner or
applicant may not always be the same as that recorded on the EPO
register or on national patent registers. It is important that the
opt-out request is filed in the correct name, otherwise it may be
deemed invalid.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.



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