Main aspects of Unified Patent Court

Determination

Unified Patent Court (UPC)- will be specialised patent court with exclusive jurisdiction for litigation relating to European patents with unitary effect (Unitary patents), also to non Unitary patents (traditional European patents), which are currently granted by EPO.  Rulings by the UPC with respect to the traditional European patents will only apply in participating member EU states.  The UPC also will have jurisdiction for supplementary protection certificates issued for a products protected by a patent.  UPC will be a court common to the Contracting Member States and thus subject to the same obligations under European Union law as any national court of the Contracting Member States. UPC will not have competence over national patents, or European patents that are not designated to the contracting Member State.

Agreement on the Unified Patent Court

Agreement on a Unified Patent Court (the “Agreement”) covers a new court structure for patent litigation relating to Unitary Patents, EPs and SPCs.

The Agreement – which is the one of the part of the Unitary Patent package –was signed on 19 February 2013 by 24 states, followed by Bulgaria on 5 March and will enter in force on 1 January 2014 or the 1st day of the 4th month after 13 contracting states, including France, Germany and the United Kingdom ratify it.
The Agreement will be open to any Member state of the European Union, but not to other parties to the European Patent Convention (such countries as Switzerland, Albania, Iceland, Liechtenstein, Macedonia, Monaco, Norway, Serbia, San Marino, Turkey). Member states which are not participating in the enhanced cooperation in the area of the creation of unitary patent protection, signing the Agreement will allow the new court (UPC) to handle European patents granted for their respective territory (Italy example). Spain is the only member EU state not participating in either the UPC or the unitary patent.

It is important to mention, that when the Unitary Patent package enters into force, the Unitary Patent will only have effect in participating member states which have ratified the Agreement on the Unified Patent Court. Even after the Unitary Patent package enters into force, it may be necessary to validate European patents and pay annuities for the member states participating in enhanced cooperation which have not yet ratified the Agreement.

A  transitional period of seven years is provided in the Agreement, which can be prolonged by up to seven years by the Administrative Committee. During the transitional period, actions concerning non-unitary European patents and SPCs may still be brought before national courts or other competent national authorities. This means that during this period, actions based on non-unitary European patents and SPC’s can be filed either with UPC or national courts. However unless the patent proprietor notifies the UPC registry of the opt-out from the exclusive competence of the Court, the UPC will have exclusive jurisdiction over traditional European patents issued or pending after the entry into the force of the UPC Agreement. The opt-out from the exclusive competence of the UPC can be filed at any time for a granted patent or a pending European patent application, as long as no action has already started before the UPC. Opting-out is not possible if some action is already been brought before the UPC. Unless an action has already been brought before a national court, applicants  who filed the opt-out  will be entitled to withdraw their opt-out at any moment and the proprietor may opt in again.

A list of countries which have already signed the Agreement is in the table below:

Country Code Member state

Signature of the Agreement

Ratification of the Agreement

AT Austria 19 February 2013 07/08/2013
BE Belgium 19 February 2013
BG Bulgaria 05 March 2013
CY Cyprus 19 February 2013
CZ Czech Republic 19 February 2013
DE Germany

ratification required for entry into force of the Agreement

19 February 2013
DK Denmark 19 February 2013
EE Estonia 19 February 2013
FI Finland 19 February 2013
FR France

ratification required for entry into force of the Agreement

19 February 2013
GB United Kingdom

ratification required for entry into force of the Agreement

19 February 2013
GR Greece 19 February 2013
HU Hungary 19 February 2013
IE Ireland 19 February 2013
IT Italy

does not participate in the unitary patent

19 February 2013
LT Lithuania 19 February 2013
LU Luxembourg 19 February 2013
LV Latvia 19 February 2013
MT Malta 19 February 2013
NL The Netherlands 19 February 2013
PL Poland
PT Portugal 19 February 2013
RO Romania 19 February 2013
SE Sweden 19 February 2013
SI Slovenia 19 February 2013
SK Slovakia 19 February 2013
IS Spain

not participating in either the UPC or the unitary patent.

Statute of the UPC

Statute of the UPC (the “Statute) is an integral part of the Agreement and set out in Annex I. The Statute contains institutional and financial arrangements for the Unified Patent Court.

Structure of the UPC

The UPC will be comprised of a Court of First Instance, a Court of Appeal and a Registry. The Court of First Instance will consist of local (for each contracting state, up to a maximum of 4 per member state), regional (for two or more contracting states, if they have a low number of patent cases) and central divisions. Participating Member states will need to decide whether to establish local divisions or participate in regional division of the UPC. The central division will be based in Paris its subdivisions will be located in Munich and London. London section will handle cases related to pharmaceutical industry and life sciences, whereas Munich section will deal with cases related to mechanical engineering, lighting and thermal engineering. As for an office of a Court of Appeals, it would be positioned in Luxembourg. A Registry will be set up at the seat of the Court of Appeal.

The panels of the UPC will be multinational and will be made up of legally and technically qualified judges. The panels of local and regional divisions will generally have three legally qualified judges. For any panel of local and regional divisions a technically qualified judge may be allocated from a pool of judges, either upon the parties request or upon the panel’s initiative. The central division will  have two legally qualified judges who are nationals of different contracting member states and one technically qualified judge allocated from the pool of Judges.  Also parties may agree to have their case heard by a single legally qualified judge. The Court of Appeal will generally sit in a multinational composition of five judges composed of three legally qualified judges who are nationals of different contracting member states and two technically qualified judges. A training framework for judges will take place in Budapest.

Scheme of the UPC:

The Agreement on the UPC also comments on the provisions of the establishment of a Patent Arbitration and Mediation Centre. The centre will be split between Lisbon and Ljubljana. The centre would encourage patent holders to start mediation or arbitration to settle patent related disputes that occur in the territory of the participating Member Countries.

European Court of Justice

According the Agreement, the UPC will cooperate with the Court of Justice to ensure the correct application and uniform interpretation of Union law. Decisions of the Court of Justice will be binding on the UPC.

Jurisdiction of divisions

Patent infringement cases will be brought before the local or regional divisions where the infringement has occurred or may occur, or there the defendant has his residence or place of business. If the infringer does not have a place of business in a participating member state then infringement matters are heard where the infringing act occurred or alternatively may be heard before the central division. The central division will also decide on revocation related issues.

Furthermore, the local and regional division will hear the following: infringement actions; actions for damages or compensation for provisional protection conferred by a published patent application; actions for provisional and protective measures and injunctions; actions relating to prior use rights. The central division will be competent to hear: actions for declaration of non-infringement (the central division will suspend the case if an infringement action related the same patent  between the same parties is initiated before local or regional division within three months of the date on which the action was initiated before the central division); actions or counterclaims for revocation of patents; actions on compensations for licences; actions against defendants domiciled outside the territory of the contracting states.

Language of the proceeding of UPC

The language of proceedings at the central division will be the language in which the patent was granted, whereas the language of proceedings before any local or regional division will be an official European Union language of the participating member state. However some exceptions are noticed in the Agreement: Contracting Member States may designate one or more of the official languages of the European Patent Office (English, French or German) as the language of proceedings of their local or regional division. Also, the parties may agree (if approved by the division) on the use of the language in which the patent was granted. At the request of single party, the President of first instance may, on grounds of fairness, approve the use of the language in which the patent was granted as language of proceedings.

The language of proceedings before the Court of Appeal will be the language of proceedings as it was used before the Court of First Instance. The parties may also agree on the use of the language in which the patent was granted as the language of proceedings. In exceptional cases and to the extent deemed appropriate, the Court of Appeal may decide on another official language of a Contracting Member State as the language of proceedings for the whole or part of the proceedings, subject to agreement by the parties.

In the event of a dispute concerning the Unitary Patents, it will be a legitimate requirement that the patent owner at the request of the alleged infringer should provide a full translation of the patent into an official language of either the participating Member State in which the alleged infringement took place or the Member State in which the alleged infringer is domiciled. The patent owner should also be required to provide, at the request of a court competent in the participating Member States for disputes concerning the Unitary patent, a full translation of the patent in the language of the proceedings before the Court. Such translations must be provided at the expense of the patent owner.

Professional representatives

Parties in the UPC may be represented by either:

• Lawyers authorised to practice before national courts (of a member state),

and/or

• European Patent Attorneys who are entitled to act as professional representatives before the EPO and who have appropriate qualifications such as a European Patent Litigation Certificate.

Fees of the UPC

Parties to proceedings before the UPC must pay court fees which will be fixed by the Administrative Committee. Court fees must be paid in advance. Party which has not paid a prescribed court fee may be excluded from further participation in proceedings. The UPC fees will consist of a fixed fee, combined with a value-based fee above a pre-defined ceiling. Targeted support measures for small and medium-sized enterprises and micro entities may be considered.
Reasonable and proportionate legal costs and other expenses incurred by the successful party of the proceedings will, as a general rule, be reimbursed by the unsuccessful party, unless equity requires otherwise, up to a ceiling set in accordance with the Rules of Procedure.

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