Unpacking the EU Patent Package: The Unified Patent Court

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Unpacking the EU Patent Package: The Unified Patent Court

Author: Paul Roscoe
Editor: Leythem A. Wall

Our previous blog post in this series focused on the European patent with unitary effect (UP). Here, we take a look at the Unified Patent Court (UPC), the other element of the Unitary Patent System (UPS).

The UPC will be a single court system for centrally enforcing and challenging classical European patents (EPs) and UPs. A single action brought before the UPC will result in a single decision that can have effect in all EU states that have ratified the UPC Agreement, as opposed to the current national court system where single decisions only have effect in their respective individual states. The UPC therefore aims to remove inconsistency in decisions and lower costs of multi-jurisdictional patent litigation in Europe.

The Court of First Instance will comprise a Central Division and local (national) or regional divisions. The Central Division will be located in London (life sciences), Munich (mechanical engineering), and Paris (electronics), where each location will handle cases relating to a specific technological area. The single, common Court of Appeal will be located in Luxembourg. There will be patent specialist judges and depending on the division and action type, also technically qualified judges. To further add to the European flavor, judges cannot all be of the same nationality.

Broadly speaking, a claim for revocation will be brought before the Central Division and a claim for infringement before the local or regional divisions. For infringement claims involving a counterclaim for revocation, it is at the discretion of the local or regional divisions to (a) handle both actions, (b) bifurcate proceedings and send only the revocation action to the Central Division, or (c) send both actions to the Central Division. For revocation claims involving a counterclaim for infringement, the Central Division will handle both actions. In general, the UPC will strive to conclude proceedings for an action (including any counterclaim) within 14 months.

The language of proceedings before the Central Division will be the language of the patent (i.e English, French or German). Before the local or regional division it will be an EU language offered by that division, typically English, or agreed by all parties.

Court fees will include a fixed fee element and may also include a value-based fee element depending on the type of action and subject to the value of the action. ‘Small Entities’ and ‘Micro Entities’ will be entitled to a 40% discount on fees. The UPC will also operate a ‘recoverable costs’ system (‘loser pays’) depending on the value of the case. Further information on the fees can be found here.

While UPs will be under the exclusive jurisdiction of the UPC and cannot be litigated in national courts, for classical EPs there will be a transitional period of seven years during which there is a choice of UPC or national courts for patent enforcement or challenge. During this transitional period it will be possible for patentees to opt out their classical EP, for the lifetime of the patent, from the UPC jurisdiction if no UPC action has yet been brought. This might be done to remove the risk of a central revocation action which can be filed at any time during the lifetime of the patent. UPs cannot be opted out of the system.

Patentees can also then opt the classical EP back in to the UPC as long as no national court action has commenced. This might be done to centrally enforce their patent across Europe in a single action. However, no further opt outs are available. Once the transitional period ends, classical EPs that are not opted out can only be enforced and challenged in the UPC for EU states that have ratified the UPC Agreement.

EPO oppositions will still be available to challengers of classical EPs (and UPs) regardless of whether the patent has been opted out.

The next post will compare and contrast the different possibilities for patents in Europe (national v classical EP v UP) as well as consider pros, cons and filing strategies. For further information in the meantime, please see Finnegan UPS and UPC.

 

DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.

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