In the Unitary Patent System, the Unified Patent Court (UPC) has jurisdiction over both infringement and revocation actions. However, under certain conditions, an infringement action and a parallel revocation action may be decided by different divisions of the UPC.

In the Unitary Patent System, claims for injunctive relief and damages arising from European patents can be enforced in several EU countries through centralized infringement proceedings before the Unified Patent Court (UPC). As a defense against such infringement actions, the validity of the patent may be challenged.

The validity can be challenged (irrespectively of whether an infringement action is pending) by means of an opposition against the European patent with the European Patent Office (within the opposition period). Apart from this, it is possible to file (even after opposition proceedings before the European Patent Office have been concluded) a national revocation action against a national part of the European patent (during the transitional period of seven years after the Unitary Patent System comes into force), and a revocation action before the UPC against the Unitary Patent or the parts validated in the member states of the Unitary Patent System. In addition, when an infringement action is pending before the UPC, the validity of the Unitary pPatent can be challenged by means of a revocation counteraction.

In the German patent system the bifurcation principle applies, according to which infringement and revocation actions are decided by different courts. By contrast, in most other European patent systems one and the same court can jointly decide on both infringement and validity. In the Unitary Patent System, these two principles are combined: On the one hand, the UPC has jurisdiction over both infringement and revocation actions, while on the other hand, an infringement action and a parallel revocation action may under certain conditions be decided by different divisions of the UPC. Namely, the local or regional division before which the infringement action is pending may, after hearing the parties, decide at its discretion to:

a) proceed with both the infringement action and the revocation counteraction while allocating a technically qualified judge,

b) refer the revocation counteraction for decision to the central division and suspend or proceed with the infringement action, or

c) with the agreement of the parties, refer the entire case for decision to the central division.

Thus, in cases a) and c), infringement and validity are decided by the same division, whereas case b) corresponds in a way to the German bifurcation principle. However, whether in particular the German local divisions, which are expected to receive most infringement actions in Europe, will choose alternative b) and thus relinquish competences assigned to them, may be doubted, but it remains to be seen how the courts will handle this in practice. Furthermore, the patent proprietor will in general not agree to alternative c), because he has already decided to file the infringement action with the respective local or regional division, and the transfer to the central division could delay the case.

The situation is more complicated if an independent revocation action is pending before the central division and the patent proprietor only subsequently files an infringement action before a local or regional division against the plaintiff in the revocation action, so that the revocation and the infringement proceedings are initially separated. In this situation, the plaintiff in the revocation action (defendant in the infringement action) may file a revocation counteraction in addition to its central revocation action. The central revocation proceedings are then in general suspended, and the local or regional division may proceed at its discretion as described above. For example, it may then reconnect the two actions according to options a) or c). However, in exercising its discretion, the local or regional division must take into consideration the status of the central revocation proceedings.

Finally, infringement proceedings before the UPC may also be suspended if there are pending invalidity proceedings before the European Patent Office or a national authority, at least when a decision in the invalidity proceedings may be expected to be given rapidly.

 

 

With regard to jurisdiction of the Unified Patent Court (UPC), a distinction must be made between the international jurisdiction of the UPC, the subject-matter jurisdiction, the jurisdiction in relation to courts of Member States with regard to non-unitary European patents, and the jurisdiction of the individual chambers of the Court of First Instance among themselves.

International jurisdiction

With regards to international jurisdiction, the most important aspect in practice is that a potential defendant does not have to be domiciled in a contracting member state in order to be brought as a defendant for patent infringement (Unitary and non-unitary European patent) before the UPC. Instead, it is also sufficient that the patent infringement has occurred or has an effect in the territory of a contracting member state.

Subject-matter jurisdiction

With regard to subject-matter jurisdiction, the most important aspect in practice is that the UPC has jurisdiction for infringement actions, provisional measures (in particular injunctions, preservation of evidence, etc.; see the corresponding overview), actions for declaratory judgment of non-infringement and nullity (revocation) actions arising out of or against Unitary Patent(s) and non-unitary European patent(s) as well as SPCs relating thereto (however, with exceptions for non-unitary European patents during a transitional period, see below). The UPC also has jurisdiction if the defendant asserts the FRAND objection in infringement proceedings (in which case however the UPC must apply EU law and the case law of the ECJ and, if necessary, also refer questions on EU law thereto if necessary).

The UPC hears counterclaims for revocation regardless of whether an opposition to a (non-)unitary patent has been filed with the EPO. The UPC may conduct the revocation action in parallel or suspend the proceedings. However, if the EPO declares a patent invalid (with binding effect), this is also binding on the UPC.

Jurisdiction within UPC

All actions have to filed with the Court of First Instance. The decisions of the Court of First Instance may be appealed to the Court of Appeal. The Court of Appeal is also the last instance. The Court of First Instance is divided into the central division and the so-called local and regional divsions. The contracting member states each have one (or, in the case of Germany, four) local chamber(s); several contracting member states can also join together and form a joint regional chamber instead. As a rule, infringement actions have to be filed with the local or regional chambers and can only be filed with the central chamber in certain constellations. See the article on forum shopping for the options available.

Relation to national courts

National courts, on the other hand, will continue to have jurisdiction over disputes concerning the ownership of both Unitary and non-unitary patents and employee invention rights thereto. Apart from that, national courts of course continue to have jurisdiction for actions re national patents and utility models.

In the case of non-unitary European patents, the patent proprietor can declare the so-called “opt-out” three months before the UPC starts its operation (so-called “sunrise period”) until presumably seven years after this date (provided that the patent was also granted or applied for at least within this period and provided that no action concerning this bundle patent is pending before the UPC). If the opt-out is declared and not withdrawn, this patent is permanently withdrawn from the jurisdiction of the UPC. As before, infringement proceedings and (after expiry of the opposition period) opposition proceedings are then to be conducted in the countries where the bundle patent is validated.

If the opt-out is not declared, plaintiffs have a right of choice with respect to bundle patents whether to go before a national court or before the UPC. At present, it is still disputed in the literature to which types of proceedings this right of choice extends (only infringement and nullity actions or also negative declaratory actions and provisional measures) and to what extent the exercise of this right of choice blocks the possibility to go before the respective other court. It is predominantly assumed that subsequent proceedings which territorially do not have the same subject matter as earlier proceedings remain possible or that the respective territory is to be excluded (e.g. if an infringement action is brought before the UPC, invalidity counterclaims can still be brought before national courts; if an infringement action is brought before a national court, an infringement action concerning the remaining validations can be brought before the UPC, etc.). However, it remains to be seen how the UPC and the national courts will position themselves in this regard.

 

In the context of actions for infringement before the Unified Patent Court (UPC), forum shopping means the possibility for a plaintiff to choose a particular division out of several competent divisions for his action.

Reasons for forum shopping

Reasons for choosing one division over another are based on the wiggle room and discretion that the rules on procedure and material laws governing the UPC provide the judges with, which can result in (statistically significant) differences between the divisions in how they decide on various issues and how they conduct the proceedings. Examples would be: win/loss ratio; how often court experts are appointed; how often counterclaims for revocation are referred to the central chamber and a corresponding infringement action is stayed; how often infringement actions are stayed in light of pending opposition proceedings before the EPO; how often local chambers request technically qualified judges in infringement actions; chances for success of applications for provisional measures.

Forum shopping at UPC

The rules governing the UPC allow forum shopping to a certain extent. Actions for infringement can be brought before a local and regional division of a contracting member state if infringement takes place in said state (e.g. sale of goods). Further, actions for infringement can be brought before a local and regional division of a contracting member state if defendant has its seat in said state. In case the defendant does not have its seat on the territory of any contracting member state, the action can also be brought before the central division. In case a contracting member state has several local divisions (for now only Germany, with four divisions), an action can be brought before any of these divisions (in case infringement takes place on the territory of that state).

For example: a defendant has its seat in Austria, infringement takes place in Germany, Italy and France. The action for infringement can then be brought be before the one of the local divisions in Vienna, Munich, Dusseldorf, Mannheim, Hamburg, Milan and Paris.

Since the divisions of the UPC, in principle, render decisions for the territories of all contracting member states (see the corresponding article), plaintiffs can take advantage of the peculiarities of the divisions in cases where several divisions are competent (as in the above example).

 

The written procedure of the, in practice, most important proceedings, actions for infringement of patents together with counterclaims for revocation and applications to amend, is illustrated in the Rules of Procedure:

Graphic

 

 

The following additions should be noted:

Other procedures

Preliminary objections regarding competence of the court and procedural language must be raised within one month after service of the infringement action.

The chart further does not show the ability of the court to stay proceedings. In practice, relevant grounds for a stay of the proceedings can be separate actions for revocation before the central division (for which the three-month deadline, which applies to counterclaims for revocation, does not apply) and/or opposition proceedings before the EPO. Also of relevance are cases in which a local division refers a counterclaim for revocation to the central division and stays the infringement action (instead of continuing it).

Deadlines

Furthermore, the deadlines shown in the chart are not binding, but can be extended given a respective application from a party. One example would be the case where defendant argues that he cannot meet the three-month deadline for the counterclaim for revocation (e.g. because the prior art search is extensive) and does not want to be referred to a separate claim for revocation.

The written procedure is followed by the interim procedure, which is scheduled to take three months. The oral hearing shall be held after the interim procedure is closed. Ideally, the whole proceedings will take no longer than 9 to 11 months.

Interim Procedure

In the interim procedure, the court prepares the oral hearing. Together with the parties it discusses whether witnesses or court experts should be summoned. Regarding the latter, the parties can make suggestions on whom to choose and what questions to ask. After the written expert opinion has been issued, the parties can also make comments thereto.

During the written procedure, the court can manage the case, e.g., by ordering the parties to submit relevant evidence.

Decisions by the court can be appealed. The appeal proceedings mirror the proceedings in first instance, with the main difference being that for the most part no further facts re infringement and prior art can be submitted. The parties therefore have to rely on the facts and prior art presented in the first instance. Consequently, in the written procedure, each party can usually make only one submission (instead of two or three). Ideally, the appeal proceedings will therefore also take no longer than one year, meaning that a final and binding decision can be expected no later than two years in total.