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.
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.
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.
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.
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.
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.
No, the Unified Patent Court has exclusive jurisdiction over Unitary Patents.
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.
*Up to 24 of the 27 EU states; 17 at the commencement of the Unified Patent Court.
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).
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.
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.
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.
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.
Your Maucher Jenkins patent attorney can assist you with filing opt-out requests.
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