UPC: Background & Overview

After two unsuccessful attempts to create a “Community Patent” in 1973 and 1989, the European Commission finally tabled the unitary patent proposal in 2011. (See European Parliament website for more information).

The system was supposed to be operational during the first semester of 2017, but due to the importance of the UK in the system, the “Brexit” referendum in June 2016 delayed its entry into force. Stakeholders now wish that it takes place before the end of 2017.  

Current system

Currently in Europe it is possible to apply for a patent through three routes:

• The National route: applicants can apply directly through national IP offices. It provides a national protection and can only be enforced before national courts.
• The international route: the Patent Cooperation Treaty gives the opportunity to applicants to file a single application potentially designating up to137 different contracting states.
• The European route: applicants can apply for a single European patent which is then to be validated in some or all of the contracting states to the European Patent Convention. The European Patent Convention established a centralized procedure for granting European patents, where the nationally validated titles can be enforced before national courts.

Several disadvantages were identified in the current system that the UPC is supposed to take into consideration.

In the current system, disputes related to European patents, such as infringement or revocation actions, pertain to the jurisdiction of national courts, whose decisions are binding on the considered jurisdiction. Thus, it is possible that the same European patent, validated in several states, may lead to several parallel disputes in the states where it has been validated.

Within the frame of the Unitary Patent package, a Unitary Patent Court (UPC) will be set up. By default, it will have jurisdiction over European patents with unitary effect (UP) instead of national courts. It will also have jurisdiction over present European patents and European patent applications, under certain conditions. In this case, its jurisdiction over your own existing or future European patents will depend on whether you will ask for an exemption from the UPC’s exclusive jurisdiction, also known as “opt-out”, when available.

Unitary Patent and Unitary Effect

The Unified Patent Court Agreement creates a specialized patent court, the UPC, with exclusive jurisdiction for litigation relating to European patents and European patents with unitary effect. 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 request for unitary effect shall be filed at the EPO in the language of proceedings within one month from the publication of the mention of the grant of the European patent in the European Patent Bulletin.

According to article 3.1 of Regulation 1257/2012, the European patent must offer the same protection for the different states participating to the Unitary Patent (i.e. The European patent must have been granted with the same set of claims for all the participating Member States).  Therefore, all 25 Member States need to be designated and no withdrawal of designations or limitation of claims for certain of the participating Member States will be possible since it would prevent unitary effect.

The geographical scope of the unitary effect of a given European patent will not extend following the progressive ratification of the UPC Agreement after the registration of the unitary effect. Only Unitary patents registered thereafter will enjoy unitary effect in all participating member states.

UPC Structure

The UPC will be a unique court, common to the Contracting Member States. The Agreement is not open to states outside of the European Union, which raises the question of the UK remaining in UPC system after Brexit.

The UPC will comprise a Court of First Instance, a Court of Appeal and a Registry. The Court of First Instance will be composed of a central division and by several local and regional divisions. The Central Division will mainly be located in Paris, with London hosting a branch dealing with pharmaceutical, human necessities and life science patents, and Munich hosting a branch dealing with mechanical engineering, lighting, heating, blasting and weapons patents. Paris will handle cases relating to physics, electricity, transportation, textiles and paper, fixed constructions and performing operations. The Court of Appeal will be based in Luxembourg and the Registry will be set up at the seat of the Court of Appeal.

The UPC will have exclusive jurisdiction 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 competence of the local and central divisions depends on the nature of the case:

• Infringement actions are to be brought before a local or regional division.
• Independent revocation or non-infringement actions are to be brought before the central division.

The UPC may operate according to a bifurcated system where  the infringement action and the counterclaim for revocation of the patent are treated in two different proceedings. If during infringement proceedings at a local or regional division of the UPC, the defendant launches a counterclaim for revocation, the local or regional division shall have the choice either to:

1. Proceed with both the action for infringement and with the counterclaim for revocation after adding a technical judge,
2. With the agreement of the parties, refer the whole case (infringement and revocation action) for decision to the central division, or
3. Refer the counterclaim for revocation for decision to the central division and suspend or proceed with the action for infringement. This last situation qualifies as bifurcation.

The Court panels will be made of legally and technically qualified judges from all over European Union.

• The local/regional divisions will be made up of three legally qualified judges. In addition it will be possible to appoint a technically qualified judge from a pool of judges, either on request of one of the parties or on the panel’s own initiative. For local divisions, one or two of the three legally qualified judges will not be national(s) of the contracting state (depending on whether the division is set up if a state that has 50 or more patent cases per year). For regional divisions, only one of the three legally qualified judges will not come from the region.
• The central division will be made up of two legally qualified judges who are nationals of different contracting member states and one technically qualified judge with qualifications and experience in the relevant technological field.  When hearing actions concerning certain EPO decisions, the panel will be composed of three legally qualified judges.
• The court of appeal will be made up of three legally qualified judges who are nationals of different contracting member states and two technically qualified judges with qualifications and experience in the relevant technological field.

According to Article 48 of the UPCA and Rule 8 of the 18th Rules of Procedure, a party shall be represented before the UPC by a lawyer or European Patent Attorney having appropriate qualifications.

Languages

The language of proceedings before the UPC depends of the Court in charge of the dispute:

• Before the local division, it will be the official language of the Contracting Member State hosting the local division or language designated by the state or language of the patent (if agreed by the parties and the Court).
• Before the central division, it will be the language in which the patent was granted.
• Before the Court of Appeal, it will be the language of proceedings before the Court of First Instance.

Ratification

The UPC Agreement will enter into force when it has been ratified by 13 Signatory States, including the three most patent intensive Member States: Germany, France and the United Kingdom.

Since Italy ratified the UPCA on 10 February 2017, 12 Member States have now ratified the Agreement. (The complete list of the Member States that ratified the UPCA can be found here). However, Germany and the United Kingdom have not yet ratified the UPCA, even though they may ratify it soon.

Indeed, on 28 November 2016 during the EU Competitiveness Council Meeting (See the Government announcement here) the UK has confirmed that it will ratify the UPCA.

Spain, Croatia and Poland have chosen not to take part in the system.