Unified Patent Court
The UK ratified the Unified Patent Court (UPC) Agreement in April 2018 and has consistently indicated that it intends to participate in the UPC and Unitary Patent (UP). However, there are differing views as to whether it will actually be possible for the UK to remain part of the UPC system after it leaves the European Union (‘Brexit’).
In principle, the UPC will open its doors and the UP will become available to European patent applicants three months after the Agreement comes into force. However, at present it is not clear when this will happen because of the uncertainty surrounding Brexit, as well as an outstanding legal challenge in the German Federal Constitutional Court. These factors have delayed ratification by Germany and hence the coming into force of the UPC agreement.
This information sheet sets out briefly how the Unified Patent Court is expected to operate and our view of some of the possible advantages and disadvantages of the new Court. It accompanies our information sheets relating to the UP and the options for opting out of the UPC. Please refer to these other sheets for more information.
The UPC provides a single court for patent litigation across a number of European countries (the “contracting member states”). The UPC therefore allows one patent litigation action to have effect in several jurisdictions instead of conducting litigation in several national courts at the same time.
All patents granted by the EPO will fall within the jurisdiction of the UPC. This includes both the new UP and “traditional” European patents validated in the normal way.
For “traditional” European patents, the UPC will only have jurisdiction over the validated states that are also UPC contracting member states. For example, a European patent validated in UK, France, Germany, Spain and Switzerland will fall under the jurisdiction of the UPC for the UK, France and Germany (as contracting member states), but not for Spain or Switzerland. Supplementary Protection Certificates (SPCs) in participating Member States will also fall under the jurisdiction of the UPC. See the table at the end of this page for a list of countries who have ratified or need to ratify the UPC Agreement (and so will become contracting member states).
However, the Applicants and proprietors of “traditional” European patents, applications and SPCs will be able to opt out of the UPC jurisdiction for at least the first 7 years during a transitional period. An “opted out” patent will not fall under the jurisdiction of the UPC. Instead, the opted out patent will fall under the jurisdiction of the national courts (as for current European patents). The opt-out procedure will be important for anyone wishing to avoid the UPC in the early stages. We have prepared a separate information sheet specifically on the opt-out procedure.
Patent infringement and validity actions will be available in the UPC.
Infringement actions will be started in “local” or “regional” divisions. A claimant has the option to issue proceedings in the local/regional division depending on the location of the alleged infringement or where the Defendant has a principal place of business (Art. 33(1) UPC Agreement).
Revocation actions will be started in the Central Division. The location of the Central Division Court is determined by the subject-matter. The Central Division court will be in London for Life Sciences, Munich for Mechanical and Engineering, and Paris for Physics and Materials.
A counterclaim for revocation can be initiated when an infringement action is brought before the local or regional division. Similarly, a counterclaim for infringement can be initiated in any local or regional division when a revocation action is pending at the central division. Bifurcation of revocation and infringement actions is possible at the UPC under specific circumstances. However, bifurcation will occur after the written proceedings stage, and so it is thought that claim construction will be considered before bifurcation.
There will be three procedural stages at the court of first instance:
(i) a written procedure;
(ii) an interim procedure; and
(iii) an oral hearing (i.e. a trial).
All three stages should be completed in around 12 to 15 months. The timescale makes the UPC a faster revocation possibility than the EPO opposition procedure (especially at appeal stage).
The Court fees are to be set as fixed‑based fee for an infringement action at € 11,000 and the fixed‑based fee for a revocation action at € 20,000. An additional value‑based fee is payable on cases with a value of more than € 500,000. The consultation proposes a tiered fee structure, with the value-based fee equating to around 0.5 to 1 % of the value of the case.
The value of the action is judged by the judge-rapporteur taking into account the value as assessed by the parties. The judge-rapporteur will make an order for the value during the interim procedure (after written procedure, but before the oral hearing).
There are several factors that will influence the success of the UPC. These include:
These variables will be largely influenced by the successful operation of the Court of Appeal to ensure that:
Good staffing of the Court of Appeal will therefore be a big influence on the success of the UPC system.
As summary of some of the pros and cons of the system are given in the table below.
Single litigation action for “European” infringement (including the issuance of “pan-European” injunctions)
New and untested system – it may take a few cases before procedure is optimised and several years before there is an established body of case law. As such, it will be difficult to predict chances of success/likely outcome of proceedings in the early years
Court will have pool of experienced IP judges from around Europe – the judges will initially be appointed on a part time basis so that the best national judges are able to serve both the UPC and the national courts
Central revocation action possible even after EPO opposition period has expired
Proprietors may gain early experience of the Court
Bifurcation of proceedings is possible, thus potentially leading to higher costs and different claim interpretation for validity and infringement. To minimise the risk of divergent claim interpretation, bifurcation will only occur after the written proceedings have been concluded.
Proprietors can potentially shape early case law, and in particular may have an influence on a point of law that is currently unfavourable in national courts around Europe
Risk of forum shopping – there is a risk that the different local/regional divisions will take different approaches with respect to claim interpretation and substantive law. Thus some local/regional divisions may appear to be more, for example, patentee-friendly than others and result in forum shopping. The Court of Appeal will need to function well to minimise any variations between different Divisions of the Court.
|Existing EPs do not become “UPs” by opting in to the UPC|
A list of potential Contracting Member States:
|Countries that have ratified or must ratify (so will be Contracting Member States)||Countries that have not yet ratified|
1: yet to ratify but required to ratify before the UPC comes into force
2: have indicated that they will not ratify before the UPC comes into force
3: Croatia only recently joined the EU and is entitled to accede the UPC Agreement, but has not done so yet
This information is simplified and must not be taken as a definitive statement of the law or practice.