The 18th Draft Rule of Procedure in detail…How does it differ from the 17th Draft?

We published this morning the 18th Draft Rules of Procedure. We now look at the modifications that the Preparatory Committee introduced to the final version of the UPC Rules of Procedure. 

Rule 5 -Paragraph 13: Opt out applications: 
The opt-out period  is now confirmed by paragraph 13 of Rule 5. Applications accepted by the Registry before the entry into force of the Agreement, shall be treated as entered on the register on the date of entry into force of the Agreement.

Rule 10 (c): Written procedure:
If all parties agree not to have an oral hearing (to reduce costs for example), the Court can decide not to hold an oral hearing.

Rule 14: Use of languages in proceedings:
Panels of regional or local divisions will have the possibility to use the official national language(s) of the country where it is situated for oral proceedings and for rendering orders or decisions, even if the parties themselves have chosen to use an additional language of the EPO as the language of proceedings. It will be up to the Judge Rapporteur to order this exception to the language regime, and he may only do so “in the interest of the panel”. However, in case the official language is used over the chosen language, each order and decision shall be accompanied with a certified translation for enforcement.

It means for example that the Judge Rapporteur in Lithuania may decide that in the interest of the panel it is better for the panel to use  Lithuanian rather than English/French/German, in oral proceedings and for drafting orders and decisions.

Rule 17.3: Distribution of actions between the seat of the central division and its sections: 
The UPC agreement provides that the competence is determined by the classification of the patent. Rule 17.3.c) provides a solution for the situation in which the action involves a single patent having more than one classification or where the action involves more than one patent which do not have a single classification corresponding to the seat or section of the central division. In such case the Registry shall assign the action to the panel to the seat or section appropriate to the first classification of either the single patent or, where the action involves more than one patent, the patent first listed in the Statement of claim.  This distribution is either accepted or rejected by the presiding judge of the aforementioned  panels. If the presiding judge rejects it, they shall instruct the Registry to refer the action to the presiding judge of a panel of the section of the central division they considers appropriate, who shall likewise consider if the allocation is appropriate. If the latter considers otherwise, the President of the Court of First Instance (which will be located in France), shall finally allocate the action.
Rule 158, paragraphs 4 and 5: Decision by default in case of no security for costs: 

At any time during proceedings and following a reasoned request by one party, the Court may order a party to provide a security for the legal costs and expenses incurred or to be incurred by the requesting party. If a party fails to provide adequate security the Court may give a decision by default.

Rule 202: Letters rogatory:

The Court can now issue letters rogatory for the production of documents by other competent courts or authorities outside the EU. In previous drafts of the Rules of Procedure the letters rogatory were only possible for the hearing of witnesses or experts by such courts.

Rule 229: Appeals not respecting the time requirements: 
Rule 229 provides that the President of the Court of Appeal shall reject the appeal as inadmissible, if it is lodged outside the time limits set for appeal . The rule however provides that the President “may” give the appellant an opportunity to be heard beforehand.

Rule 311: Insolvency of a party:
Rule 311 now provides that the Court shall stay proceedings up to three months if a party is declared insolvent under the law applicable to the insolvency proceedings. Proceedings may also be stayed at the request of a temporary administrator who has been appointed before a party is declared insolvent.

Rule 345: Allocation of judges to panels by the President of the Court:
The task of the President of the Court of First Instance is to allocate the judges to the panels of the local or regional divisions, the seat of the central division and its sections. In previous drafts this task was given to the “presiding judge of each local or regional division or the seat of the central division or one of its sections”. The Preparatory Committee has since decided to allocate the task of allocating judges to the President of the Court, who will therefore become a key player within the UPC.

Where to find the Conventions, Treaties, Regulations, Agreements related to the UPC?


The  UPC’s primary sources are various, and it can be quite difficult at times to locate them. The UPC Blog by LAVOIX has therefore created a new category in its blog that indexes the main pieces of legislation and documents relevant to the UPC.


You will notably find:











EU Legislation and Unitary Patent

 Which EU legislation provides for Unitary protection?

The European patent with unitary effect relies upon three separate pieces of legislation (unitary patent, language regime and unified patent court).


More related EU legislation can be found in the Sources pages.

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.