Unified Patent Court Q&A

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What is the Unified Patent Court?
  • The Unified Patent Court is a new court which will enable corresponding patents granted by the European Patent Office in force in any participating EU Member State (at least 13 Member States including the UK (subject to Brexit), Germany, and France), European patents with unitary effect (otherwise known as Unitary Patents), and related supplementary protection certificates to be enforced or revoked in a single court action.

When will the Unified Patent Court come into effect?
  • The Unified Patent Court will come into effect four months after the Unified Patent Court Agreement has been ratified by 13 Member States including the UK, Germany and France. Only Germany now needs to ratify the UPC Agreement in order for the Unified Patent Court to come into effect. Provided the complaint to the German Constitutional Court is resolved in favour of the UPC, German ratification could take place in 2019 and the UPC open for business in early 2020.

What will the impact of the Unified Patent Court be on my business?
  • The Unified Patent Court will have a significant impact on any business which is involved in patent litigation or licensing.

    The primary purpose of the Unified Patent Court is to simplify the enforcement of patents in Europe.

    At present, all patent rights are national rights and can only be enforced through individual enforcement actions in each of the national courts. This means that where a patentee seeks to enforce corresponding rights across Europe, multiple court actions are required. Similarly, if someone wants to clear the way and revoke equivalent patents in multiple European countries, separate revocation actions are required. When the Unified Patent Court comes into existence, it will be possible to enforce or revoke such rights across much of the EU, including the major patent jurisdictions of Germany, France, the Netherlands, Italy and the UK (provided the UK is still able to participate in the UPC post Brexit), in a single court action before the Unified Patent Court.

    As the Unified Patent Court reduces the need for multiple parallel court actions, the cost of patent litigation will be reduced. The cost of litigation in the new court is likely to be similar to the cost involved in a court action in a single European jurisdiction such as the Netherlands or Germany and is therefore likely to be cheaper than the cost of enforcement in the UK, which is currently the most expensive jurisdiction for enforcement of patent rights in Europe.

Who can sue in the Unified Patent Court?
  • Patent proprietors, holders of supplementary protection certificates, exclusive licensees, and some non-exclusive licensees of such rights will be able to bring actions for actual or threatened infringement before the Court. In addition, anyone may bring an action to revoke such rights or for a declaration of non-infringement.

Where will actions be heard?
  • At first instance, the Court will consist of a number of national or regional chambers and a Central Division divided into three sections located in Paris, London and Munich (of course, the London division will depend on the UK’s continued participation in the UPC post Brexit).

    Infringement actions will mainly be brought before the national or regional chamber where infringement is alleged to have occurred or alternatively before the national or regional chamber where a defendant is domiciled. Revocation actions will be brought before one of the sections of the Central Division. The section in Munich will handle cases concerning mechanical inventions, the section in London will be responsible for chemical and pharmaceutical inventions, and all other inventions, such as electronics and telecoms, will be handled by the section in Paris.

    National chambers can be established in any participating Member State. Alternatively, two or more countries can choose to establish a joint regional chamber. It is expected that (subject to Brexit) national chambers will be established in all of the countries where there is currently a significant amount of patent litigation, such as the UK, Germany, France, the Netherlands and Italy. In Germany, it is expected that multiple chambers will be established, most likely in the same locations as the existing German Courts which handle a significant amount of patent litigation, namely Mannheim, Düsseldorf and Munich.

    A regional Swedish/Baltic chamber will be established jointly by Sweden and the Baltic States.

    If no local or regional court is established in a particular jurisdiction, infringement actions concerning infringement in that jurisdiction or against defendants domiciled in that jurisdiction can be brought before the Central Division, as may any action against a defendant who is domiciled outside of the EU.

    Appeals against decisions made at the first instance of the Unified Patent Court will be heard in the Court of Appeal based in Luxembourg.

    If matters of EU law arise, the UPC will have jurisdiction to refer questions of law to the Court of Justice of the European Union, and may have to do so in certain cases.

What will the language of proceedings be?
  • Actions brought before the Central Division will be conducted in the language in which the patent was prosecuted before the EPO. In approximately 80% of cases this is English, in around 15% of cases it will be German and in around 5% it will be French.

    The language of proceedings in cases before the national and regional chambers will depend upon the chamber. In most cases this will be the national language of the country where the chamber is established, although some chambers may provide litigants with a choice of languages, typically with litigants being given the option of litigating in the local language or alternatively litigating in English.

    If the local/regional division offers litigants a choice of language, the Claimant may choose in which one to start proceedings. There is one exception: if the Defendant only infringes in one Member State, and that Member State has more than one official language, then the Claimant must start proceedings in the language of the region where the Defendant is domiciled or has its principal place of business.

    It is proposed that the regional Swedish/Baltic chamber will conduct their business in English.

Who will be the Judges?
  • There will be both legally qualified judges and technically qualified judges. Each case at first instance will be heard by a multi-national panel of three legally qualified judges. Where a case is brought before a local chamber in a country where a "significant amount" of patent litigation has previously been brought, two of the judges will be from that country and the third will be appointed from elsewhere. If the chamber is established in a country without a "significant amount" of patent litigation, there will be one local judge and two judges from jurisdictions with a history of patent litigation. A "significant amount" of litigation, for the purposes of the rules, is at least 50 patent cases a year on average for three years prior to (or subsequent to) the UPCA coming into force. This means that chambers in Germany, France, the UK (subject to Brexit), Italy and the Netherlands should have two local judges. Any local chambers outside of those countries will consist of one local judge and two foreign judges appointed from a list. Regional chambers will consist of two local judges from the countries forming the regional division and one judge appointed from outside of the region. A party may request an additional, appropriately technically qualified judge be allocated by the President of the Court of First Instance to any local or regional division panel.

    Any panel of the Court of Appeal will sit in a multi-national panel of five judges (three legally qualified judges who are nationals of different participating Member States and two technically qualified judges).

What law will apply?
  • The basic law on what is and is not patentable and the scope of patent protection will be drawn from the existing European Patent Convention (EPC). The Unified Patent Court Agreement contains provisions defining acts of infringement which basically correspond to existing national law. In addition, the UPCA also provides for the UPC to base its decisions on provisions of EU law and in particular the EU Regulations for the EU Unitary Patent. The UPC will also refer to international agreements applicable to patents which are binding on all participating Member States such as the Paris Convention and national patent law.

What are the rules of procedure?
  • The 18th draft of the Rules of Procedure have been issued: these are to be reviewed by the European Commission for compatibility with Union law and will be subject to formal adoption during the Provisional Application Phase.

    The Rules of Procedure are a mixture of various aspects taken from existing national laws. The rules provide for obtaining evidence by way of a saisie contrafaçon procedure such as currently exists in Italy and France, and for the filing of protective letters such as are currently used in Germany and the Netherlands. In the period straight after proceedings have been commenced, parties will be required to provide detailed explanations of their case in writing, such as is currently the case in the Netherlands and Germany. At the end of this ‘written procedure’, the Court will hold a case management conference similar to the procedure in the English Patents Court to decide upon the next steps in the case. This can include the Court ordering parties to disclose specific documents and orders for the cross-examination of witnesses such as currently exists in English proceedings. However, the extent of any such cross-examination will be limited to specific issues in the manner of Danish patent proceedings. After any such additional evidence has been obtained and any cross-examination has taken place, an oral hearing will be held to provide the parties with a final opportunity to summarise their case and present arguments to the Court. Such an oral hearing will typically be concluded within a single day.

Will the Court hear infringement and validity together?
  • Local and regional chambers hearing infringement cases in which a defendant files a counter-claim for revocation of a patent will have a choice. After having heard the parties, the chamber may choose to hear infringement and validity together; may choose to hear only arguments on infringement and send the validity proceedings to be heard by the Central Division; or, with the agreement of the parties, may send the entire case to be heard by the Central Division. If a local or regional chamber does decide to split a case and only hear arguments relating to infringement and send the validity case to the Central Division, the chamber will have the option to stay the infringement proceedings pending the outcome of the validity case and will be obliged to do so if there is a high likelihood of a patent being found invalid.

Who should represent me?
  • Representation by a multi-jurisdictional litigation team is likely to be a significant advantage.

    The Rules of Procedure for the UPC are a mixture of the rules taken from the pre-existing national courts. Clients will benefit from a multi-national approach as lawyers from different jurisdictions will be able to leverage their experience of national law and procedure, such as German and Dutch style pleading, English style cross-examination and French or Italian saisie proceedings.

    Although the Rules of Procedure will be uniform across the local and regional chambers, it is possible that there may be differences in speed and approach. A multi-national team will be best positioned to take advantage of any differences.

    Finally, every case will be heard by a multi-national bench with judges coming from a variety of different national backgrounds. We consider that a corresponding multi-national litigation team will be best placed to address the court in the most persuasive manner.

Can I opt out?
  • During a transitional period the new Court will run in parallel with the existing national patent enforcement systems. For at least the first seven years of the Unified Patent Court, patent proprietors will be able to opt out both granted European patents and European patent applications pending before the European Patent Office from the jurisdiction of the new Court and avoid risking valuable assets in an untried system. Opting out a patent will not require the payment of an official fee, although the administrative cost of collecting all the necessary consents from the relevant patent proprietors may not be negligible.

    Depending on the costs involved, opting-out may be an attractive option for patent proprietors as it prevents competitors from being able to apply to revoke patents across Europe in a single court action. Further, as the rules permit a proprietor to withdraw an opt out, if a patent proprietor wishes to enforce a patent they have the option of either using the existing national country-by-country enforcement procedures or opting back into the new Court at that stage.

    It will, however, be important for patent proprietors to engage with the new system. Many valuable precedents will be established by the Court in the early days of its existence. If a patent proprietor chooses not to be involved with the Court, any such precedents will be set without its involvement, possibly to its long-term disadvantage.

What do I have to do now?
  • Patent proprietors should be considering whether they are going to opt out all, some, or none of their European Patents. We explore the options in more detail here.

    Patentees and patent licensees should also be considering their licensing agreements to ensure that they are comprehensive for the new system. See our detailed article here.

    Closer to the date when the Court comes into force, patent proprietors should also consider the possibility of slowing down the prosecution of patent applications pending before the EPO in order to take advantage of the new Unitary Patent system which will come into force at the same as the new Court. We discuss how the new system will affect the patenting opportunities here.

    Consider validating important patents in a greater number of participating Member States in order to maximize the breadth of any injunction granted in the UPC.

This document (and any information accessed through links in this document) is provided for information purposes only and does not constitute legal advice. Professional legal advice should be obtained before taking or refraining from any action as a result of the contents of this document.