Unified Patent Court - Further Information
The sections below provide further detailed information on the Unified Patent Court (UPC). Of course, if you have any specific questions please contact us.
The Agreement on a Unified Patent Court is available here.
The Rules of Procedure of the Unified Patent Court are available here.
The UPC will share jurisdiction with national courts for all national validations of European patents which have not been opted out of the UPC. This means that an infringement or revocation action on a European patent which has not been opted out of the UPC could be brought either at the UPC or at a national court.
The UPC will have exclusive jurisdiction over all Unitary Patents.
National courts will have exclusive jurisdiction over national validations of European patents which have been opted out of the UPC.
The Unified Patent Court will comprise a Court of First Instance and a Court of Appeal. The Court of First Instance shall comprise a Central Division and Local or Regional Divisions. Local Divisions will have responsibility for actions brought in respect of infringement in individual participating Member States. Regional Divisions will have similar responsibility, but for a number of Member States.
Currently it seems likely that there will be a Local Division in at least each of the UK, Germany, France, the Netherlands and probably Belgium and Italy. There is also expected to be a regional division based in Stockholm covering Sweden, Lithuania, Estonia and Latvia.
The Central Division is currently due to be split between the United Kingdom, France and Germany. The headquarters of the Central Division will be in Paris. The London section of the Central Division has been assigned patents relating to chemistry, metallurgy, pharmaceuticals, biotechnology and also human necessities, including medical devices. The Munich section of the Central Division will deal with patents relating to mechanical engineering. The Paris section of the Central Division will deal with patents in all other fields, including electronics, software and physics.
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 defender 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 Member State.
To challenge the validity of a patent at the UPC, other than by way of 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 contracting Member State, then the claimant may bring an action either where the infringement occurred or before the Central Division.
If a defendant in an infringement actions 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.
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 the national law of the contracting Member State of the first applicant at the time of filing of the patent. If none of the applicants have a place of business in a contracting Member State at the time of filing then German law applies (as the law of the Member State in which the EPO is resident).
In practice, determining the law for infringement may not be of much significance. That is because the law in all EU Member States 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 (AUPC) 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.
Local or Regional Divisions will hear cases either in one of the official languages of the host Member State or any other language designated by the Division. 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.
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 revoke the decision of the Court of First Instance and give a final decision, or refer the case back to the Court of First Instance.
The Rules of Procedure of the Unified Patent Court will apply. More detail is available here, but in summary the procedure comprises a Written Procedure in which the parties submit statements of case, an Interim Procedure in which preparations for trial are made, and an Oral Procedure. The rules include hard deadlines for the steps of the written procedure including just 3 months for filing a defence to an infringement action and a counterclaim for revocation and 2 months for filing a reply to the defence and a defence to the counterclaim for revocation. The rules envisage that the first instance procedure should be completed in 12 to 15 months, with a similar period allowed for the appeal.
Final Orders obtainable
The UPC will be able to order the revocation of a patent, either entirely or partly.
In infringement proceedings the Court may order an injunction against the infringer aimed at prohibiting the continuation of the infringement. The Court may also grant an injunction against an intermediary providing services being used by a third party to infringe a patent. In addition, the Court may order that infringing products, at the expense of the infringer, be:
1) recalled from channels of commerce;
2) deprived of their infringing property; or
3) destroyed, together with materials and implements used to produce the products.
Further, the UPC will be able to order an infringer to pay damages to compensate the Patentee (or exclusive licensee) for losses suffered as a result of the infringement. Damages will be compensatory, not punitive. The Patentee’s lost profit, unfair profits made by the infringer and non-economic factors such as moral prejudice can be taken into account when assessing the level of damages payable. An infringer can avoid paying damages if he can demonstrate that he did not know, and had no reasonable grounds to know, that he was infringing the patent.
Interim orders obtainable
A variety of interim orders will be available.
Interim injunction: The Court may order an alleged infringer to cease, or not to commence, activities said to infringe a patent while the issue of liability is considered.
Disclosure of evidence: If a party presents reasonable evidence sufficient to support its claims that necessary documents or information (relating either to liability or to quantum of damages or to the validity of the patent) is in the control of the opposing party or a third party then the Court may order that other party to disclose the relevant material, subject to the protection of confidential information.
Evidence preservation: The Court may, before commencement of proceedings on the merits of the case, order ex parte measures (inspecting premises, taking samples, seizing products, materials and implements used in the production and/or distribution of those products and documents relating thereto) to preserve relevant evidence in respect of the alleged infringement. These orders may be subject to a bond, and an Applicant seeking such an order may have to compensate a defendant for damage suffered as a result of an evidence preservation order if it is subsequently found that there was no infringement or if the Applicant fails to pursue the case.
Other types of order
The court may order a party not to remove from its jurisdiction any assets located therein or not deal in any assets, whether located in its jurisdiction or not. It is likely that these interim orders will require a further order by the national court of the relevant country to enforce.
The court may order an infringer, or in certain circumstances a third party, to disclose:
1) the origin and distribution channels of the infringing products or processes;
2) the quantities produced, manufactured, delivered, received or ordered as well as the price obtained for the infringing products; and
3) the identity of any third person involved in the production or distribution of the infringing products or the use of any infringing process.
Evidence and the burden of proof
As usual in civil litigation, any party seeking to rely on a fact has the burden of proving it and may rely on witnesses, experts, inspection, experiments or comparative tests, affidavits, documents, requests for information, and party submissions. The UPC agreement gives no indication as to the relative weight of each of those types of evidence.
The burden of proof can be reversed if the subject matter of the patent is a process for obtaining a new product, and the infringing product is identical to the product produced by the patented process.
The court may appoint court experts to provide expertise for specific aspects of the case. There will be a list of approved experts kept by the Registrar to guarantee independence and impartiality.
The UPC agreement states that reasonable and proportionate legal costs and other expenses incurred by the successful party shall as a general rule be borne by the unsuccessful party. A separate publication has specified the levels of recoverable costs and further information relating to that can be found here.
Enforcement of orders
Enforcement proceedings shall be governed by the law of the contracting Member State where the enforcement takes place.
The UPC can sanction non-compliant parties with a recurring penalty proportionate to the importance of the order to be enforced.
Arbitration and mediation
A patent mediation and arbitration centre will be established in Ljubliana and Lisbon, and a list drawn up of mediators and arbitrators.
Parties and representation
The Patentee will be entitled to bring infringement actions. An exclusive licensee may bring an infringement action as long as the licence agreement does not prohibit it, and it gives prior notice to the proprietor. A non-exclusive licensee may bring an infringement actions if the license agreement expressly permits it, and it gives the proprietor prior notice.
Any natural or legal person “who is concerned by a patent” may bring a revocation action. It is not yet clear exactly what is meant by the term “concerned”.
Any lawyer authorised to practise before a court of a contracting Member State and any suitably qualified European Patent Attorney may represent a party before the UPC.
For more information please contact Martin Jackson