The impact of Article 83 UPCA on the applicable law ?

What is the impact of opting out (or bringing a case to a national court during the transitional period) under Article 83 of the Unified Patent Court Agreement (UPCA) on the applicable law for European patents without unitary effect ?

National courts should apply the national law and not the UPCA, says the Preparatory Committee.

The Preparatory Committee released its position on 29th January 2014 in an Interpretative Note (www.unified-patent-court.org/news).

Article 83 UPCA provides exceptions from the principle of exclusive jurisdiction of the Unified Patent Court (UPC), in that:

–         during a transitional period (seven years extendable by another seven years), cases relating to a European Patent without unitary effect may be brought before national courts, and/or

–         applicants or holders of a European patent without unitary effect may request during that period to opt out from the exclusive jurisdiction of the UPC.

The question thus arises whether the national courts competent under these circumstances would still have to apply the substantive law of the UPCA or whether they could apply their national law.

The Committee notes that the only helpful reference which can be found in the UPCA is Article 3 that provides that the UPCA applies to European patents or European patent applications without prejudice to Article 83, but does however not give a clear answer to the above question.

The Committee then considers that the intention of the Contracting States was to enhance legal certainty by a single court. As “there is no possibility for national judges to refer interpretative questions to the Unified Patent Court […], application of the substantive patent law that is contained in the Agreement by national courts would seriously bear the risk of diverging interpretations, which would be contradictory to the goals of the Agreement”.

As a result, the competent national courts would have to apply the applicable national law.

Interestingly, the Committee also considers the issue in respect of SPCs as the language of Article 3 differs when it refers to European patents or European applications on the one hand, and SPCs on the other hand, in that it does not provide any reference to Article 83 UPCA for SPCs.

Firstly, it is to be noted that the language of Article 3 (“supplementary protection certificate issued for a product protected by a patent”) makes it clear that the UPCA only applies to granted SPCs and not to SPC applications.

Secondly, Article 83 refers in the same way to applications for European patents, European patents and “Supplementary Protection Certificates that have been issued for a product protected by a European Patent”. There is therefore no reason to treat SPCs differently, despite the different formulation of Article 3.

Thus, once a SPC issued for a product protected by a European patent without unitary effect is opted out (or an action based on that SPC is brought to a national court during the transitional period), the UPCA does not apply and the competent national court should apply the applicable national law.

Although this has not been addressed by the Interpretative Note, we further understand that this principle cannot apply to SPCs issued for a product protected by a European patent with unitary effect, as these SPCs are not recited by Article 83 which only refers to “SPCs issued for a product protected by a European patent” (ie) a patent, which does not benefit from unitary effect in accordance with the definition under Article 2 UPCA.

In any case, the nature of SPCs issued in respect of European Patents with unitary effect still needs to be clarified as SPCs are applied nationally by the patentee in the states of his choice, and granted by national offices (see our post on SPCs here).

The UPC Blog welcomes your questions and comments on this topic.

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