Jurisdiction of the UPC

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” (provided that the patent was granted or applied for within the transitional period of at least seven years and there is no action pending on this bundle patent 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.