Tag: UPC Competence

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What will the UPC be competent for?

What should you know about the Unitary Patent?

What will be the competence of the UPC?

As a general rule: The UPC will have exclusive competence in respect of civil litigation on matters relating to European patents and Unitary Patents. The UPC will consequently also have exclusive competence on Supplementary Protection Certificates issued for a product covered by a European patent and a Unitary Patent.

More specifically: The Court will be exclusively competent for actual or threatened infringements and related defences, and actions for declaration of non-infringement. The UPC will also be competent for actions for provisional and protective measures, injunctions, actions for revocation and counterclaims for revocation.

However, during at least 7 years after the entry into force of the UPC Agreement, national courts will share jurisdiction with the UPC over actions for infringement and revocation of the national part of a European patent. These 7 years correspond to the transitional period.

 

What about the Court of Justice of the European Union? 

The UPC will have the same obligation as any national court to request preliminary rulings from the Court of Justice of the European Union.

In fact, the UPC is a court common to EU Contracting Member States and as such, it must follow, apply and ensure the uniform interpretation of European Union law.

However, national courts will remain competent for actions that do not come within the exclusive competence of the UPC. The UPC will thus be incompetent with regard to national patents or supplementary protection certificates granted for a national patent.

 

What will be its relationship with the EPO?

The UPC will have exclusive competence to annul or alter the decisions of the EPO (Article 32 UPC Agreement) if the EPO misuses its power or infringes:

  • Regulation (EU) N° 1257/2012;
  • Regulation (EU) N°1260/2012;
  • Any of the implementing rule of the EPO “for carrying out the administrative tasks referred to in article 9(1) of Regulation (EU) N°1257/2012;
  • An essential procedural requirement.

Nonetheless, oppositions at the EPO will still be possible. The parties however must first inform the UPC of any pending revocation, limitation or opposition proceedings before the EPO. The Court may then:

  • stay its proceedings when a rapid decision may be expected from the EPO.
  • request that opposition proceedings before the European Patent Office be accelerated in accordance with the proceedings of the European Patent Office, (Rule 298 of the Rules of Procedure of the UPC)
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Four key points to understand the Unified Patent Court

What should you know about the Unitary Patent?

(1) Which courts currently have jurisdiction over European patents?

Currently, national courts of the contracting states of the European Patent Convention (EPC) are competent to decide on the infringement and validity of the national part of European patents.

This gives rise to a number of difficulties when a patent proprietor wishes to enforce a European patent, or when a third-party seeks the revocation of a European patent, in several countries.

Patent proprietors indeed risk facing diverging decisions between the different national courts of the EPC contracting states. Patent proprietors also face high costs and legal uncertainty over the fate of their patents.

At present, forum shopping is inevitable. Parties in fact seek to take advantage of differences in the national courts’ interpretation of harmonised European patent law, the level of damages awarded, the national procedural laws, and litigation pace.

(2) What is the Unified Patent Court?

The Unified Patent Court Agreement (UPC Agreement) will create a specialised patent court, the Unified Patent Court (UPC).

The Unified Patent Court will have exclusive competence over European patents and European patents with unitary effect. The territorial jurisdiction of the UPC will extend to the 25 participating Member States (every European Union Member States besides Spain, Croatia and Poland).

This means that the rulings of the court will be simultaneously valid in all participating Member States.

The UPC will thus create a uniform and foreseeable patent environment within the European Union.

 

(3) Which legal instruments created the UPC?

Two Europeans regulations created the UPC:

  • Regulation (EU) N°1257/2012 dated 17th December 2012 implementing the enhanced cooperation in the area of the creation of the unitary patent protection.
  • Regulation (EU) N°1260/2012 dated 17th December 2012 implementing the enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements.

These two regulations will apply from the entry into force of the UPC Agreement.

(4) How much will users of the court need to pay for each action before the UPC?

To learn about the different court fees see our detailed review.

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The “Enhanced European Patent” or some long-waited-for answers on the Unified Patent Court and the Unitary Patent by the Select and Preparatory Committees.

The Unified Patent Court Preparatory Committee and Select Committee recently released an explanatory note on the “Enhanced European Patent System” detailing the purpose of the future Unified Patent Court and Unitary Patent and the key points on how this major patent reform will articulate itself with the existing European and National patents and existing jurisdictions.

 

The UPC Blog has extensively posted on the Unified Patent Court competence and procedure, on the nature of the unitary effect and the general overview and background of both the UPC (Unified Patent Court) and the UP (Unitary Patent). It is however the first time that the committees (see our posts on the Select committee and the Preparatory Committee) involved in the setting up of the UPC release an explanatory note.  It is thus the first time that clarifications rather than interpretations are made about the UPC agreement. This post will focus on three key points of the UPC explanatory note, which bring some explanations to the cacophony of information published so far, without nonetheless answering all the questions.

 

Before looking at these three substantial points, it is important to start with the reassertion from the Select and Preparatory Committees that the Unitary Patent directly derives entirely from the European patent, which provides the shell onto which the unitary effect hooks up. So to obtain a Unitary patent an applicant must first apply for a European patent at the European Patent Organisation, which will handle the application in accordance with the European Convention. It is only after grant that the proprietor of a European patent will have the opportunity to apply for unitary effect.  However if for a European patent it is necessary for the patent holder to validate the patent in each Member state where protection is required, for a unitary patent a single request will give protection in 25 Member States of the European union. (More information on the unitary effect here)

 

The rest of the explanatory note is divided between the UPC and UP, and deals with important questions such as the geographical extension, the general competence of the UPC and the transitional period. The UPC Blog by Lavoix raised in previous posts the problems of legal uncertainty attached to these three topics, we will thus look here at the response of the Select and preparatory Committees. (See Discussion posts on “Opt-out and legal certainty” “The impact of Article 83 UPCA on the applicable law” and “UPC and Infringement actions”)

 

The Geographical extension of the Unitary Patent:

The unitary effect of a European patent will cover the territories of the contracting member states that have ratified the UPC Agreement at the date of the registration of the unitary effect of the individual patent. The explanatory note however makes clear that the geographical perimeter of validity of the unitary effect will not extend following the progressive ratification of the UPC Agreement after the registration. Rather, it will stay the same until all the contracting member states ratify the UPC Agreement. It is only then that European patents registered thereafter will enjoy unitary effect in all participating member states. As for Spain, Italy and Croatia which are not participating in the UP and Poland which is participating but has not signed yet the UPC Agreement, it will be possible for the proprietor of a European patent with unitary effect to choose to validate the patent as a classical European patent.  In addition, it will also be possible to validate the same patent as a European Patent in the ten contracting states of the European Patent Organisation that are not EU Member States. (For more information on the contracting member states and Italy and Spain’s positions).

 

The UPC general competence:

On the general competence of the UPC, the explanatory note makes clear that the UPC has exclusive competence “in respect of civil litigation on matters relating to classical European patents, European patents with unitary effect, supplementary protection certificates issued for a product covered by such a patent and European patent applications”. The UPC will not however have any competence for national patents or supplementary protection certificates granted for a national patent (see our post on supplementary protection patents).

The UPC’s rulings will have effect in the territory of the contracting member states that will have ratified the UPC Agreement.  The exclusive competence of the UPC will also apply to the decisions of the European Patent Office in “carrying out the tasks of administering the Unitary patent set out in the Unitary patent regulations”.

 

The Transitional period: (For background information on the transitional period see here) 

The UPC Agreement provides for European patents a period of seven years, renewable for another seven years, during which they will co-exist with UP’s. However, as it is made clear in the explanatory note, the transitional rules will not apply for European Patents with unitary effect.  The transitional period will only apply to European patents or Supplementary Protection Certificates issued for products protected by European patents. For those European patents, the competent forum during the transitional period will be either the UPC or the existing national courts. So unless an action has already been brought before the UPC, actions for infringement or for revocation concerning European patents or for a Supplementary Protection Certificate issued for a product protected by a European patent may thus still be brought before national courts.

 

The Opt-out is, too, detailed and explained. Hence, “during the transitional period, a proprietor –or an applicant for- a European patent granted or applied for prior to the end of the transitional period or a SPC issued for a product protected by such a patent will also have the possibility to opt out the patent/application/SPC, from the jurisdiction of the UPC 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 register. It will be possible to withdraw such an opt-out at any time. There will be no possibility to opt-out European patents with unitary effect.”  In respect of the opt-out the Select and Preparatory Committees list three benefits of the UPC justifying not opting-out: “a unified jurisprudence resulting in increased predictability and the avoidance of panel litigation; judgments (injunctions, damages) with effect in 25 Member states of the EU; the expectation of speedier procedures than in many of the individual Member States”.

 

It is important to observe however that this explanatory note does not answer central questions such as the possible dual competence between the UPC and national jurisdiction under articles 32 (1) and 83 (1) of the UPC Agreement, the types of actions that would stop a patent proprietor to opt-out or the risk of lis pendens. The UPC Blog will deal with each of these issues in posts to come.

 

You can of course look at the UPCA here and the draft rules of procedures here.

 

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The Transitional Period and the Opt-out

Supplementary Protection Certificate

 

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:

 

  • · 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:

  1. 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.

 

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The UPC General Competence:

Supplementary Protection Certificate

 

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.