You can click on the diagram to see a bigger version of the UPC Agreement Transitory Period stages.
Transitory Period Diagram
The Transitional Period and the Opt-out
I. The transitional period:
The UPC Agreement provides for a transitional period of seven years, which may be prolonged up to a further seven years by the Administrative Committee on the basis of a broad consultation with the users of the patent system and an opinion of the Court.
During the transitional period the following options will be possible regarding European patents without unitary effect:
- · Actions for infringement or for revocation may still be brought before national courts (Article 83.1 of the UPC Agreement).
- · A proprietor of – or an applicant for – a European patent granted or applied for prior to the end of the transitional period will have the possibility to opt out the patent/application, unless an action has already been brought before the UPC. To this end they shall notify their opt-out to the Registry. The opt-out shall take effect upon its entry into the register. It will be possible to withdraw such an opt-out at any time as stated in Article 83.3 of the UPC Agreement
There will be no possibility to opt-out a European patent with unitary effect.
II. The Opt-out system in details:
(A) The opt-out system and its relationship with the European Patent and the European Patent with Unitary Effect:
- The Opt-out and the European bundled patent:
Pursuant to Article 83.3 of the UPC Agreement the possibility to opt out concerns a European patent granted or applied for before the end of the transitional period. That means that the opt-out once notified and registered takes effect for the entire European bundled patent for all Contracting Member States where this patent has been validated. There is no need to notify the opt-out separately for the relevant Contracting Member States.
- The unity of application and the Opt-out system:
The unity of an application and of the patent, in case of several applicants or several proprietors, is a basic principle of patent law as reflected in particular in Article 118 of the European Patent Convention. This means that applicants or proprietors of one single application for a European patent or one single European patent will have to act in common to exercise the opt-out.
- The Opt-out and the UPC’s jurisdiction:
Once an opt-out has been notified and registered the UPC does not have any jurisdiction any more with respect to the European patent or the application for the European patent concerned. The patent or application will be subject only to the jurisdiction of the competent national courts.
- The Opt-out system, the European patent and the European patent with unitary effect:
If an opt-out has been notified and registered with respect for an application for a European patent, the opt-out continues to apply to the relevant European patent, once granted. An opt-out once notified and registered normally remains in force for the entire life-time of a European patent, unless the proprietor withdraws the opt-out pursuant to Article 83.4 of the UPC-agreement.
(B) Registration of Opt-out by the UPC’s Registry:
- Opting-out fee:
The Contracting Member States in the Preparatory Committee have not yet decided if there will be an opting-out fee.
2.Registration of the opt-out:
In the interest of legal certainty for both the proprietor or applicant and third parties, it will indeed be important that the opt-out is entered into the Registry and becomes effective on the day the notification of the opt-out is received by the Registry. The Contracting Member States and the Preparatory Committee do still have to look into the necessary arrangements to achieve this.
(C) Opt-out and the choice of forum during the transitional period:
Pursuant to Article 83.1 of the UPC Agreement during an initial period of seven years after the entry into force of the UPC Agreement any proprietor of a European patent or any applicant can initiate proceedings, in particular infringement proceedings, before national courts, regardless of whether the European patent or application concerned has been the subject of an opt-out.
But will it be possible to initiate a revocation action in the UPC if someone else has already initiated an infringement action before the national courts? It will normally be possible for a party to initiate a revocation action before the UPC even if the proprietor of the European patent has initiated an infringement action before a national court. If the proprietor of the European patent wants to avoid a revocation action before the UPC he needs to make use of the possibility to opt-out from the jurisdiction of the UPC.
Opt-out and legal certainty
A few weeks ago the UPC Blog was asked these questions « How is the UPC going to ensure legal certainty between the entry into force of the Unified Patent Court Agreement and the moment European patent holders or holders of a European patent with unitary effect obtain -for those who wish- an opt-out?” “ What happens when you rely on one of these patents which are under national jurisdiction until the entry into force of the UPCA (Unified Patent Court Agreement), and then go back to national jurisdiction after the opt-out?”
The Opt-out is definitely one of the most challenging area of the UPCA, and we have in this blog been paying a particular attention to this subject -you can find more information about the Opt-out here– and in this post we will focus on the relationship between the opt-out, legal certainty and the rights of prior users.
As explained in our previous posts, the opt-out will be available to European patent holders during the transitional period, which will start after the entry into force of the UPCA and will last for seven years (art 83.1). This transitional period might be renewed for a further seven years if the Administrative Committee considers it after consultation necessary (art 83.5).
Once a European patent holder has decided for an opt-out, it will need to be notified and registered. The opt-out will become effective on the day the notification of the opt-out is received by the Registry, provided that the opted-out patent is not the subject of a pending litigation. The Contracting Member States and the Preparatory Committee however still have to look into the necessary arrangements to achieve this. The opt-out will then be effective for the lifetime of the patent except if the patent holder withdraws the opt-out pursuant to art 83.4 UPCA, provided that no action has been brought before a national court.
It is here necessary to differentiate between the transitional period and the opt-out period. In fact if patent holders can only opt-out of the UPC jurisdiction during a renewable period of seven years, the opt-out will on the other hand last for as long as the patent exists.
But which rules will govern the use and/or infringement acts of an EP which happened prior to the opt-out? How is legal certainty maintained between the entry into force of the UPC Agreement and the notification and registration of the opt-out? In fact there might be for some European patents a moment where they fall under the UPC jurisdiction until the patent holder decides and registers the opt-out, putting them back under national jurisdiction. How then is fairness ensured for prior users of European patents?
Article 28 of the UPCA clarifies this situation for prior personal use: “any person, who, if a national patent had been granted in respect of an invention, would have had, in a Contracting Member State, a right based on prior use of that invention or a right of personal possession of that invention, shall enjoy, in that Contracting Member State, the same rights in respect of a patent for the same invention.” Hence, prior user rights will be governed by national law, which will thus ensure legal certainty in that domain independently of a potential opt-out.
Moreover, it is important to note that the same is true with prior uses of an invention patented through a European Patent with Unitary Effect. In fact, following article 2 of the UPCA “patent” refers to both a European patent and a European Patent with unitary effect.
Now an uncertainty remains for the qualification of infringement acts that occurred prior to and after the opt-out. Indeed, although the definition of the infringement acts under the UPCA (article 25 and 26 UPCA) is very similar to that of the national laws of the Contracting States (eg article L. 613-3 French IP Code), it is not identical and national case law differs from one country to another. The uncertainty stands from the fact that pending the opt-out the alleged infringers should assess their risk by reference to the applicable provisions of the UPCA taking into consideration the fact that if they were to sue for infringement this would occur before the UPC and not before the national courts. In the event the patentee decides an opt-out than the alleged infringer’s assessment of his risk is flawed.
This risk is inherent to the opt-out possibility that the Contracting States have decided to offer to EP holders. One issue which does not seem to have been contemplated however is whether the national courts which would have to rule on the infringement of an opted-out patent would have to apply the UPCA rules for the period of time prior to the opt-out and the national rules for the infringement acts that occurred after the opt-out. For instance, the statute of limitation might differ (eg, Austria infringement claims must be brought within three years from the date the right holder obtains knowledge of both the infringement and the identity of the infringer whereas the UPCA states at article 72 that “(…) actions relating to all forms of financial compensation may not be brought more than five years after the date on which the applicant became aware of the last fact justifying the action.”). This subject will however be treated in more depth in a later post, soon to be published.
The UPC Blog awaits your comments and questions on this post and on any complementary topic.
The UPC General Competence:
I. Sources of the Law and substantive Patent Law:
(A) The UPC’s sources of Law:
As stated in Article 24 of the UPC Agreement, the UPC will base its decisions on Union law, The UPC Agreement, the European Patent Convention (EPC), other international agreements applicable to patents and binding on all the Contracting Member States and national law.
(B) Determination by the UPC of prior national rights and prior user rights:
Prior user rights will, pursuant to Article 28 of the UPC Agreement, be governed by national law. Anyone who has prior user rights in a Contracting Member State with regard to a corresponding national patent will enjoy the same rights in that Contracting Member state in respect of a European patent or a European patent with unitary effect.
II. General Competence:
(A) The different types of actions the UPC will be competent to hear:
The UPC will, as a general rule, have exclusive competence in respect of civil litigation on matters relating to European patents, European patents with unitary effect, and supplementary protection certificates issued for a product covered by the UPU and European Patent. The exclusive competence is however subject to exceptions during the transitional period.
The area of exclusive competence of the UPC is specified in Article 32 of the UPC Agreement. Among other things it includes actions for actual or threatened infringements and related defenses, actions for declaration of non-infringement, actions for provisional and protective measures and injunctions, actions for revocation and counterclaims for revocation.
The UPC will also have exclusive competence in respect of actions concerning decisions of the European Patent Office in carrying out the tasks set out in Regulation 1257/2012 on Unitary Patent Protection. National courts will remain competent for actions that do not come within the exclusive competence of the UPC.
(B) The UPC Court of First Instance’s competence:
Article 33 of the UPC Agreement contains a detailed description of the competence of the divisions of the UPC’s Court of First Instance. The court of first instance will thus be competent for:
- Actions for declarations of non-infringement. The central division will however suspend the case if an infringement action related to the same patent between the same parties is initiated before a local or regional division.
- Actions for revocation of a patent (including counterclaims for revocation referred by a local/regional division).
- Actions for the grant or revocation of a compulsory license.
- Actions on compensation for licenses.
- Actions against defendants domiciled outside the territory of the contracting state.
C/ The UPC local/regional division:
The UPC local and regional divisions will be competent to hear:
- Infringement actions.
- Actions for damages or compensation for provisional protection conferred by a published patent application.
- Actions for provisional and protective measures and injunctions.
- Actions relating to prior use rights.
For damages or compensation derived from provisional protection and/or prior use, the action shall be brought before the:
1) local/regional division where the infringement has occurred; or where the defendant has residence or place of business,
2) If the defendant has no residence or place of business within the Contracting Member States: the local/regional division where the infringement has occurred or before the central division.
3) If the concerned Contracting Member State has no local/regional division: the central division.
D) Counterclaims for revocation/ Bifurcation:
When an infringement action is pending before the local/regional division and a counterclaim for the revocation of the patent at issue is made, the local/regional division will have four options:
- Parties may also agree to bring actions before the division of their choice, including the central division.
- It may proceed with the both the infringement action and counterclaim for revocation (and if appropriate request the appointment of a technically qualified judge in the field of technology concerned)
- It may refer the counterclaim for revocation to the central division and then either suspend or proceed with the infringement case (similar to the German bifurcation case)
- It may refer the entire case to the central division, upon the parties’ agreement.
The second option is referred to as bifurcating the questions of infringement and validity. This may however result in a pan-European injunction for a patent later found invalid.
(E) The role of the Court of Justice of the European Union:
The UPC will be a court common to the Contracting Member States. It must respect and apply European Union law and together with the Court of Justice of the European Union ensure its correct application and uniform interpretation. The UPC will in particular have the same obligation as any national court to request preliminary rulings in accordance with Article 267 of the Treaty on the Functioning of the European Union.
(F) Oppositions to the European Patent Organisation and parallel proceedings before the UPC and the EPO:
Oppositions at the EPO will still be possible. A party shall inform the UPC of any pending revocation, limitation or opposition proceedings before the EPO. The UPC may stay its proceedings when a rapid decision may be expected from the EPO, as stated by Article 33.10 of the UPC Agreement. The Court may also of its own motion – or at the request of a party – requests that opposition proceedings before the European Patent Office be accelerated in accordance with the proceedings of the European Patent Office, as stated in Rule 298 of the draft Rules of Procedure of the UPC.