Structure and Jurisdiction of the Unified Patent Court

The Unified Patent Court (UPC) includes a Court of First Instance and a Court of Appeal. Patent Mediation and Arbitration Centres are also expected, for supporting and fostering amicable settlements for any disputes.

Any decision or order made by the Unified Patent Court is enforceable in any contracting state to the Agreement on the Unified Patent Court (the UPCA).

Court of First Instance

The Court of First Instance is where actions before the Unified Patent Court are first heard. The Court of First Instance is made up of local and regional divisions together with a central division. Locations of the divisions can be found here.

• Local divisions

The majority of participating states have at least one local division, with Germany having four. Signatory states Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania and Slovakia are also expected to have local divisions when they have ratified the UPCA.

• Regional division

There is one regional division, the Nordic-Baltic regional division, which covers Estonia, Latvia, Lithuania and Sweden.

• Central division

The seats of the central division are currently located in Paris and Munich. It has been announced that a third seat will be based in Milan, with precise details yet to be confirmed.

Where to and who can bring an action

Choosing which division to bring an action will depend on a number of factors, which include:

• The action;
• The location of the alleged infringement;
• The residence or place of business of the defendant; and
• The technology of the patent.

Infringement

Claimants pursuing infringement actions as well as actions relating to provisional and protective measures and injunctions, damages or compensation derived from provisional protection and/or prior use shall be brought before the local/regional division either where the infringement has occurred or where the defendant has their residence or place of business.

If the defendant has no residence or place of business within a contracting member state, the same actions shall be brought before the local/regional division either where the infringement has occurred or the central division.

If the contracting member state does not host a local division or participate in a regional division, then the same actions shall be brought before the central division.

Parties may also agree to bring actions before the division of their choice, including the central division.

Revocation or Declaration of Non-infringement

Claimants pursuing revocation actions or actions for non-infringement shall be brought before the central division unless an action for infringement between the same parties referring to the same patent has been filed with a local/regional division. In that case, the action shall be brought before the same local/regional division.

If a counterclaim for revocation is filed in infringement proceedings, the local/regional division may (i) proceed with both actions, (ii) refer the counterclaim for revocation to the central division (bifurcation) or (iii) refer the whole case to the central division with the agreement of both parties.

Similarly, parties may also agree to bring actions before the division of their choice, including the central division.

Responsibilities of the Seats of the Central Division

The Munich seat of the central division will hear cases involving patents in IPC section (F), which includes mechanical engineering. At least until a third seat is formally allocated, the Munich seat is also provisionally handling patents in International Patent Classification (IPC) section (C) chemistry (including genetic engineering) and metallurgy.

The Paris seat of the central division will handle all other classifications. This includes provisional handling of patents in IPC section (A) human necessities (including pharmaceuticals).

The responsibilities of the announced Milan seat have not yet been revealed.

Court of Appeal

The Court of Appeal will decide on appeals against decisions of the Court of First Instance. The Court of Appeal has a single seat based in Luxembourg.

Why choose E+F to represent you?

As mentioned above, English will be a common language of proceedings and so European patent attorneys based in the UK will be well suited to assist you with the UPC. Many of our partners also have extensive experience in European opposition and appeal proceedings, which will be immensely valuable when representing you before the UPC.

 

For more detailed advice in relation to any of the issues discussed above, or for advice relating to other matters regarding European practice, please do not hesitate to get in contact with your E+F representative or email us at elkfife@elkfife.com.