The Unified Patent Court

Unified Patent Court FAQs

 

A. The Unified Patent Court is a new supranational court. It will have the exclusive right to issue judgments in lawsuits involving Unitary Patents, for example with regard to questions of infringement or validity. Its judgments will be enforceable throughout all of the countries which have signed the Unified Patent Court Agreement.

The UPC will also have jurisdiction over “classical” European Patents – but during a transitional period of 7 years (which might be extended to 14 years) you will be able to “opt out” so that these patents remain under the jurisdiction of national courts instead.

A. The UPC will have a complicated structure consisting of “Local”, “Regional” and “Central” Divisions across Europe (which together form the “Court of First Instance”) as well as a Court of Appeal in Luxembourg. Different parts of the Court will normally have different competencies depending on the type of case, the technical subject matter and/or the countries where parties to proceedings are based or where certain acts took place.

The Central Division will have its headquarters in Paris, with a specialist section in London dealing with chemistry (including pharmaceuticals), metallurgy and “human necessities” and a specialist section in Munich dealing with mechanical engineering, lighting, heating, weapons and blasting.

Following the UK’s vote to leave the European Union, it is possible – but not certain - that the London section of the Central Division will be relocated to one of the remaining EU countries. No official announcements have been made concerning this at the present time, and a relocation of the court will require amendment of the Unified Patent Court Agreement.  Dehns will monitor developments and provide further updates.

A. This is complicated and will depend on a number of factors depending on the type of case and where certain acts took place or where the defendant is located.

In most cases the default forum will be the Local or Regional Division responsible for the country where the defendant has a residence or place of business, or where an alleged infringement has taken place. In some cases this means there will be a choice of different forums.

Certain types of action must be brought before the Central Division. Parties can also agree to bring any kind of action before the Central Division. Cases at the Central Division will be allocated to Paris, London or Munich depending on the technical subject matter.

Appeals from any section of the Court of First Instance will be heard by the Court of Appeal. Points of law can also be referred from the Court of First Instance to the Court of Justice of the European Union (CJEU) for a preliminary ruling.

The responsibilities of the various sections of the Court overlap in a complicated way and so this is necessarily a simplification. For more details for any particular case please contact any member of the Dehns team of highly qualified patent attorneys and litigators, or download our Guide to the UPC.

A. Yes, bifurcation can theoretically take place at the UPC. However, it is not yet known how often this will occur in practice.

A common tactic in infringement proceedings is for the accused infringer to file a counter-claim asserting that the patent is invalid. In some national legal systems, such as in Germany, the invalidity proceedings are then separated from the infringement proceedings. This is known as “bifurcation” and will be an option at the UPC if a counterclaim for revocation is filed during infringement proceedings at a Local or Regional Division. The Local/Regional Division will have the option of referring the revocation proceedings to the Central Division while holding on to the infringement proceedings.

A risk in bifurcated proceedings is that the invalidity decision issues after the infringement decision, meaning that a party can be judged to be infringing a patent – with potentially severe consequences – only later for it to be decided that the patent was invalid all along. Bifurcated proceedings can also lead to increased legal costs due to the need to fight two lawsuits in parallel, possibly in different countries and different languages and using different legal teams.

Bifurcation is not compulsory at the UPC, and the Rules of Procedure encourage the Court to put the infringement proceedings on hold until the invalidity challenge has been decided, or to accelerate the invalidity hearing to ensure this comes first. In addition, much of the procedure before the Court will be carried out in writing. This may, in practice, limit the frequency of bifurcation, or reduce the possibility of adverse effects from being found to infringe an invalid patent. In the early years of the Court, it may be the case that different Local/Regional Divisions show different tendencies with regard to bifurcation.

A. Cases before the Court of First Instance will normally be heard by a panel of three judges. In the Local and Regional Divisions, the panel will normally consist of three legally-qualified judges. In the Central Division, the panel will normally consist of two legally-qualified judges and one judge having an appropriate technical qualification. The Local, Regional and Central Divisions can be enlarged with a fourth judge having an appropriate technical qualification if requested.

Cases before the Court of Appeal will normally be heard by a panel of three legally-qualified judges and two technically-qualified judges.

In all parts of the Court, the judges on any panel will be of different nationalities.

Unlike in some national legal systems, such as that of the USA, there will be no jury.

A. This depends on several factors. However, it seems likely that English will be allowed in most circumstances.

The official language for any Local or Regional Division will normally be an official language of the country (or one of the countries) which hosts that Division. However, the Court can also choose to permit the use of English, French or German. The language of proceedings before the Central Division will normally be the language in which the patent was granted, which will be English, French or German. Proceedings before the Court of Appeal will be in the language which was used at first instance, or the language of the patent if all parties agree.

In practice, the majority of European Patents are granted in English and it is also expected that most Local or Regional Divisions of the Court will allow English to be used as an official language in proceedings even if this is not an official language of the country where that Division is located. Therefore, it seems likely that English will be the predominant language of the Court.

A. Actions at the UPC will have three parts: a written procedure (where the parties to the dispute set out their positions in writing), an interim procedure (where the Court seeks to clarify any points of contention, can order the production of evidence or appointment of expert witnesses, and establishes a schedule for further acts) and, finally, an oral hearing.

Much of the procedure is carried out in writing, with the oral hearing normally lasting only one day. In this respect the procedure is somewhat similar to the EPO’s Opposition and Appeal procedures. Overall the timescales are designed to ensure that most cases will take 12 to 15 months from the start of the written procedure to the issuing of a written decision after the oral hearing. This is significantly faster than typical EPO Opposition and Appeal procedures as well as being faster than proceedings in many national courts.

For more details please contact any member of the Dehns team of highly qualified patent attorneys and litigators, or download our Guide to the UPC.

A. Yes. EPO Opposition and Appeal proceedings will still be available and an Opposition can be filed as an alternative to revocation proceedings before the UPC, or in parallel, as long as you are within the applicable EPO time limit (nine months from the grant of the patent). The EPO can revoke a Unitary Patent if a successful Opposition is filed.

The fees associated with EPO proceedings are lower than the UPC fees and so EPO Oppositions should remain a popular alternative, or complement, to UPC revocation proceedings, just as they are with national litigation at present. However, if a speedy decision is important, the UPC timescale of 12-15 months from the start of proceedings to the written decision is much faster than EPO Oppositions and national litigation, which can take years to conclude.

A. Any European Patent Attorney having suitable litigation qualifications – which includes the attorneys here at Dehns.

UPC proceedings will bear close procedural similarity to proceedings at the EPO, so Dehns patent attorneys, who have extensive experience of EPO Opposition and Appeal proceedings, will be particularly well-suited to represent you before the UPC.

European Patent Attorneys can represent you before the UPC even if they are not nationals of a UPC member state.  This means that Dehns attorneys will continue to be able to act for you in all UPC matters even if the UK does not remain a member of the system after Brexit.

A European Patent Attorney of any nationality can represent you before any part of the Court.  This means that Dehns attorneys, based in the UK and Germany, can represent you in front of the Central Division in London, Munich or Paris, in front of the Court of Appeal in Luxembourg, or in any Local or Regional Division anywhere in Europe, regardless of the nationality of the parties involved.

A. Fees for actions at the UPC will be based on a combination of fixed charges for different types of action, supplemented in some cases by a “value-based” component based on the estimated value of the case, as determined by the Court. In most cases the fixed fee will be €11,000 or €20,000. The “value-based” fee will vary on a scale from €0 for relatively low-value disputes up to €325,000 for exceptionally valuable cases. You should also budget for professional charges from your representative.

SMEs will be entitled to a fee reduction of 40% in many cases.

For a more detailed summary of the fee structure of the UPC please contact a Dehns attorney or download our Guide to the UPC.

A. Yes, unless you opt out.

During a transitional period of 7 years (which might be extended to 14 years after a review) it will be possible to opt “classical” European patents out of the jurisdiction of the UPC, so that these remain the responsibility of national courts. If a “classical” European patent is not opted out, it will fall within the jurisdiction of the UPC instead.

After the transitional period is over, all European patents – whether they are Unitary Patents or “classical” European Patents – will be subject to the exclusive jurisdiction of the UPC.

A. You will need to file a request to opt out with the UPC Registry. This must be done by a representative qualified to act before the UPC and there is no official charge for this.

The opt out request can be filed while the patent application is still pending or at any time after the patent has been granted, as long as it is not already the subject of proceedings before the Court.

Once the patent is opted out, any litigation will need to be conducted in national courts unless the opt-out is withdrawn. If an opt-out is withdrawn you cannot opt the same patent out of the UPC’s jurisdiction again.

A. There is no “one size fits all” answer here.

The UPC is an as-yet untested system. In the early stages you may want to take a “wait and see” approach and opt at least some of your patent portfolio out as a precaution until the UPC becomes more established.

If you file an opt-out you will reduce the risk of your patent being invalidated across Europe by a single finding of invalidity (though beware EPO Oppositions!).

On the other hand, to assert an opted-out patent in multiple countries you will need to pursue parallel litigation in separate national courts, which can be expensive and lead to different outcomes in different countries. Opting in would allow you to obtain a single outcome enforceable in multiple countries, potentially within a shorter timescale and at a lower cost overall. If you opt a patent out, however, you can still choose to opt back in if the prospect of enforcing it through the UPC is attractive.

You should also bear in mind that the UPC has the power to grant provisional remedies such as French-style saisies (seizures of evidence prior to trial), which are not available under national law in every country. If such remedies are attractive to you as a tool for dealing with infringers you may wish to consider opting in.

Dehns can provide detailed advice relating to “opting-out” and your own particular circumstances, so please contact any of the team for more information.

A. No. National patents (filed directly with individual national patent offices) will not be subject to the UPC’s jurisdiction. These will remain the sole responsibility of national courts.

If you want to ensure that your patents remain completely free of the UPC’s jurisdiction you may wish to consider filing national patent applications.

 

The information on this page is necessarily of a general nature and is given by way of guidance only. Specific legal advice should be sought on any particular matter. Dehns accepts no responsibility whatsoever for any action taken or not taken on the basis of the information contained herein.

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