Competence of the UPC
In principle, from the entry into force of the agreement, the Unified Patent Court (UPC) will have exclusive competence in civil proceedings relating to European patents, Unitary Patents, supplementary protection certificates for products protected by such patents and European patent applications. The scope of exclusive competence includes, inter alia, actions for actual or threatened infringement and related defenses, actions for a declaration of non-infringement, actions for provisional and protective measures, actions for injunctions, actions for damages, actions for revocation and counterclaims for a declaration of invalidity, and actions against decisions of the European Patent Office relating to administrative tasks.
For actions relating to patents or supplementary protection certificates that do not fall within the exclusive competence of the court, the agreement states that national courts of the contracting member states continue to be competent.
During a transitional period of seven years from the entry into force of the agreement, national courts and the UPC are on an equal footing, and during this phase there is therefore no primacy of the UPC.
In addition, until one month after the end of this transitional period at the latest (which can be extended by a further seven years), patent proprietors have the possibility to exclude the exclusive competence of the UPC by means of a so-called “opt-out declaration”. This declaration can be withdrawn and thus the exclusion of the competence of the UPC can be cancelled. There are no fees for the opt-out declaration and it must be made by all patent proprietors jointly or by their representatives to the UPC’s office uniformly with effect for all states. Although it can be made at any time during the transitional period, it can no longer be made once legal proceedings relating to the patent have been instituted before the UPC. To take account of this circumstance, patent proprietors already have the possibility to make an opt-out declaration for their existing European patents and European patent applications during the so-called “sunrise period” before the entry into force of the agreement and thus before such proceedings can be initiated by a third party. The start of this period will be announced by the authorities and will last approximately three months.
If the patent proprietor makes an opt-out declaration, the European patent in question will no longer fall within the jurisdiction of the UPC and any litigation concerning that patent will continue to be brought before the national courts.
Any Unitary Patent or bundle patent for which the patentee has not made use of the opt-out declaration is subject to the jurisdiction of the UPC and must be heard by it.