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Withers & Rogers is operating on a business as usual basis. We are all working remotely and do not anticipate any notable change in service to our clients.
The new Court would offer the obvious advantage of enabling Unitary Patent holders to bring a single infringement action throughout all of the participating Member States. However, this would also enable third parties to knock out Unitary Patents in a single revocation action. The UK’s current position on the Unitary Patent Court post-Brexit is also discussed below. If you would like more information on the UK’s membership of the Unitary Patent, click here.
The Court would consist of a Court of First Instance and a Court of Appeal. The Court of First Instance would consist of Central, Local and Regional Divisions. The Central Division would be based in Paris, with the current legal framework providing branches for London and Munich also. The current framework splits work between the three locations based on subject-matter. London is scheduled to handle cases with International Patent Classification (IPC) codes A and C. These are cases relating to chemistry, pharmaceuticals, biotechnology and human necessities, including medical devices. Munich is scheduled to handle cases with IPC code F. These are cases relating to some aspects of mechanical engineering. Everything else would be handled in Paris. Given the UK’s likely status outside the UPC (see below) it seems likely that the branch A and C branch would be relocated from London before (or perhaps immediately after) the UPC was to enter into operation.
Local Divisions may be established in any of the participating Member States, while Regional Divisions may be established between groups of two or more participating Member States. Currently, Local Divisions are likely to be established in Düsseldorf, Munich, Mannheim, Hamburg, Paris, The Hague, Brussels, Milan, Helsinki, Copenhagen, and Vienna. A regional Divisions is planned to be established as a “Nordic-Baltic” Division, for Sweden, Lithuania, Estonia & Latvia.
The Court of Appeal would be based in Luxembourg.
During the UK’s Transition Period for leaving the EU (which is currently set to end on the 31st December 2020 but could be extended), the UK remains a participating member state of the Unified Patent Court Agreement.
After the UK’s Transition Period ends some legal changes would likely be required for the continued participation of the UK in the Unitary Patent Court if there is the will from both the UK and the EU. However the current UK government position, as of February 27, 2020, is to not seek to be a part of the Unified Patent Court. Under a previous Prime Minster the UK elected to complete the legal process to join the UPC, even though the triggering of Article 50 to withdraw the UK from the EU had already occurred, but under the current Prime Minister it now seems that the UK will cease to be a member state of the UPC at the end of the Brexit transition period. This transition period now seems likely to occur before the UPC enters into operation such that UPC will not have jurisdiction the UK even temporarily.
British companies and inventors will be able to use the UPC if and when it comes into operation The Rights of Audience of British-based European Patent Attorneys are unaffected by the Government’s decision. Withers & Rogers have a number of British & German European Patent Attorneys and German Rechtsanwalt, based in the UK, France and Germany, who will all have full rights of representation before the UPC.
Different types of legal action can be brought before different parts of the Court. The following table summarises the main routes available to litigants:
|Type of Action||Route|
|Revocation||Central Division – revocation actions may only be brought before the Central Division|
|Declaration of Non-Infringement||Central Division – declarations of non-infringement may only be brought before the Central Division|
|Infringement||Local/Regional Division – where infringement occurred, or where defendant is based, at choice of proprietor|
|Central Division – on agreement of both parties, or if defendant is not based in the EU, or if no Local or Regional Division exists|
|Counterclaim for revocation||Local/Regional Division – where infringement action is brought|
|May be referred to Central Division at choice of court|
|Appeals||Court of Appeal in Luxembourg|
Revocation actions and declarations of non-infringement must be brought in the relevant Central Division. Revocation of Unitary Patents or European Patents would have effect throughout the participating Member States. For European Patents, protection in all of the participating Member States which form part of the European Patent would be revoked. Countries in which a European Patent is validated which are not participating Member States would not be revoked. It would not be possible to revoke a European Patent in certain participating Member States, but not others.
Infringement actions may be brought before the Local or Regional Division where the infringement occurred, or where the defendant has its residence or principle place of business, at the choice of the proprietor. In the absence of a country of residence or principle place of business, actions may be brought in the country where the defendant has a place of business. Where the defendant has neither a place of residence, principle place of business, or place of business in a participating Member State, an action may be brought either in the Local or Regional Division where the infringement occurred or in the Central Division. Furthermore, if the country concerned does not have a Local or Regional Division, actions may be brought in the Central Division.
Counterclaims for revocation would be made in the same Local or Regional Division where the infringement action is brought, or in the Central Division when the action is brought there. Counterclaims for revocation may be referred by Local or Regional Divisions to the Central Division, at the choice of the Court. Where a counterclaim is referred to the Central Division, the infringement action may or may not be stayed by the Local Division, pending the outcome of the revocation action. With agreement of the parties, the entire case may be transferred to the Central Division. When a counterclaim for revocation is referred to the Central Division, and infringement proceedings are not stayed, the resulting process is referred to as bifurcation.
Bifurcation is one of the main talking points of the new court structure. The new system provides for a situation in which infringement proceedings may go ahead in a Local Division court, before any counterclaim for revocation has been heard by the Central Division. This could lead to Europe-wide injunctions being issued under patents which are not valid. This is clearly a very attractive situation for proprietors. While bifurcation is provided for in the legislation, it remains to be seen whether local courts would operate in this manner.
In most cases the patent owner would have some choice over the language used at the UPC. When there is infringement of a patent in multiple countries, patent owners who file their European patent in English should usually have the option of litigating in English.
With a few exceptions the language of proceedings is usually in accordance with the following rules:
The languages of each of the Local/Regional Divisions are likely to be as follows:
|Local / Regional Division||Language(s)|
|Dusseldorf, Munich, Mannheim and Hamburg||German and English|
|Paris||French and English|
|The Hague||Dutch and English|
|Brussels||Dutch, French, German and English|
|Helsinki||Finnish, Swedish and English|
|Copenhagen||Danish and English|
|Nordic Regional Division||English|
Infringement actions would have a value based fee, that varies dependent on the potential financial impact of the case. Based on current proposals it appears that the Court fees would be comparable to present German Patent litigation, although the value based fee may be determined to be higher because the financial impact affects a larger market.
On a finding of infringement, damages, destruction and delivery-up would be available, based on current practice in the major patent courts of Europe.
One of the key features of the new system is that Europe-wide injunctions would be available. For Unitary Patents, an injunction would cover all participating Member States. For European Patents, injunctions would cover all participating Member States in which the patent has been validated. A consequence of this is that an injunction would not be effective in countries covered by a European Patent which are not part of the Unified Court system (for example Spain, Switzerland, Norway and Turkey).
Recoverable legal costs are capped and the cap would vary depending on the perceived value of the case. The draft proposals ranges from €50,000 for cases worth up to €250,000, to a maximum of €3,000,000 for cases worth more than €50,000,000.
Eventually traditional European patents, insofar as they cover participating UPC member states, would also fall under the exclusive jurisdiction of the new Court, but for a transitional period of seven years (which may be extended to fourteen years), claimants (whether they be the owner of a European Patent or a third party) would be able to choose to take actions at either the UPC or a national court. For Unitary Patent, the transitional period would not apply, and the UPC would be the only option (for third parties as well as the patent owner) from the outset.
At the end of the seven year transitional period the national court option would, be removed for traditional European Patents. However owners of European Patents would have the option of registering an opt-out, such that at the end of the transitional period it is the UPC option that is removed instead and national courts must be used. The opt-out can be registered during the transitional period (and it should even be possible to do so before the new Court is operational) and it would remove the UPC option immediately. Whilst using an “opt-out” would decrease the immediate options available to the owner of the European Patent Owner during the transitional period, in some circumstances early registration would be useful if use of the UPC by third parties would be problematic. A registered opt-out would be revocable but it would not be possible to register it a second time. Once an action has been brought in the UPC in relation to a given patent, the opt-out is no longer available. Conversely, if any action has been taken at a national court, it is not possible to revoke the opt-out.
During the transitional period, there are three questions to consider when filing a patent application in Europe
‘Do you want to use the EPO?’;
‘Do you want a Unitary Patent?’; and
‘Do you want to use the Unified Patent Court?’.
It seems likely that the new system would offer cheaper pan-European litigation. However, costs are likely to be higher than in some existing national courts. Moreover, proprietors who rely on low numbers of high value patents may be reluctant to try the new system, owing to the increased threat of single-action revocations. How the new Court would operate is also unknown, and this may cause applicants to steer clear until it has been tried and tested.