Jurisdiction of the JUB

Jurisdiction

General jurisdiction

Principle

The jurisdiction of the JUB is competent for any dispute in connection with (article 3 of theAgreement on the Unified Patent Court) :

• a European patent
  • with unitary effect;
  • without unitary effect;
• a patent application
• a CCP issued for a patent
  • this is quite strange since a CCP has a national and not a unitary effect…
  • and when we talk about a patent, we don't necessarily mean a “European” patent…

Sunrise period or the opt-out principle

In order to establish a smooth transition period, the principle of a sunrise period was created for actions for a declaration of infringement in relation to:

• a European patent, or
• a supplementary protection certificate issued for a product protected by a European patent.

For a period of 7 years (extendable once) after the entry into force of the agreement, it will be possible to take legal proceedings before national courts (Article 83.1 of theAgreement on the Unified Patent Court).

The holder may even prevent any procedure before the JUB by notifying the JUB registry (so-called opt-out procedure, article 83.3 of theAgreement on the Unified Patent Court, but for this to work, it must not have already been a procedure before the JUB).

The holder can withdraw this notification if he wishes (article 83.4 of theAgreement on the Unified Patent Court, but for this to work, there must not already have been a procedure before a national court).

Powers of the central division: nullity

Principle

Unless an infringement action has been brought before a local / regional division, the central division is competent for actions (article 33.4 of theAgreement on the Unified Patent Court) :

• in nullity (article 32.1 d) of theAgreement on the Unified Patent Court)
• in declaration of non-infringement (article 32.1 b) of theAgreement on the Unified Patent Court).

Universal jurisdiction

In addition, the central division is competent as soon as the parties agree that it is (article 33.7 of theAgreement on the Unified Patent Court).

Action for infringement subsequent to an action for nullity

If an invalidity action has been brought before the central division, an infringement action may be brought before any division (territorially competent within the framework of local or regional divisions, article 33.5 of theAgreement on the Unified Patent Court).

Action for infringement after an action for declaration of non-infringement

If an action for declaration of non-infringement has been brought before the central division, this action is suspended if an action for infringement (targeting the same parties and the same patent) before a local / regional division (article 33.6 of theAgreement on the Unified Patent Court).

Actions against the EPO

Actions concerning decisions taken by the European Patent Office in the exercise of its tasks fall within the competence of the central division (Article 33.6 of theAgreement on the Unified Patent Court).

Competences of national / regional divisions: counterfeiting

Principle

The local / regional divisions (of the place of counterfeiting or of the defendant's domicile / establishment) are competent (article 33.1 of theAgreement on the Unified Patent Court) concerning:

• infringement actions (patents and SPC) and including counterclaims relating to licenses (Article 32.1 (a) of theAgreement on the Unified Patent Court)
• provisional and protective measures and injunctions (Article 32.1 c) of theAgreement on the Unified Patent Court)
• actions for damages arising from provisional protection (Article 32.1 f) of theAgreement on the Unified Patent Court)
• actions relating to the use of the invention before the grant of the patent or to the law based on a prior use of the invention (Article 32.1 g) of theAgreement on the Unified Patent Court).

Universal jurisdiction

Furthermore, the local / regional division has jurisdiction as soon as the parties agree that it does (section 33.7 of theAgreement on the Unified Patent Court).

Lack of domicile / establishment in member countries

If the defendant has no domicile / establishment in the member countries, only the place of counterfeiting can determine the jurisdiction of the local / regional division (article 33.1 of theAgreement on the Unified Patent Court).

It seems obvious, but it’s better saying it…

Lack of local / regional division

If no local / regional division exists in the territory concerned, the central division is then competent (article 32.1 of theAgreement on the Unified Patent Court).

Lis pendens and connectedness

If a division is seized of a litigation (concerning the cases mentioned previously), it is not possible to seize another division (even central) (article 33.2 of theAgreement on the Unified Patent Court) if it concerns the same parts and the same patent.

Extensive counterfeiting

If the infringement targets the territory of more than three regional divisions, the regional division seized refers the case, at the request of the defendant, to the central division (Article 33.2 of theAgreement on the Unified Patent Court).

It is rather strange that this provision only targets regional and not local divisions. Indeed, at this stage, we are not even sure that more than three regional divisions will exist ...

Counterclaim for nullity

It is common for the defendant to institute a counterclaim for invalidity when he is attacked for infringement.

In this case, the local / regional division can:

• rule on the counterclaim for nullity, but requesting the assignment of a technical judge (Article 33.3 a) of theAgreement on the Unified Patent Court).
• refer the counterclaim to the central division (article 33.3 b) of theAgreement on the Unified Patent Court)
  • if the revocation of the patent is highly probable, a stay of proceedings concerning the action for infringement is pronounced (Rule 37 of the rules of procedure of the unified jurisdiction (18th project)).
  • if no stay of proceedings concerning the infringement action is pronounced, the judge rapporteur (Rule 40 (b) of the rules of procedure of the unified jurisdiction (18th project)).
• at the request of the parties, refer the whole case to the central division (Article 33.3 (c) of theAgreement on the Unified Patent Court).

Technical skills

When the central division is legally competent, matters are divided between the three sections of the central division according to the technical area in question:

• Paris
  • industrial techniques,
  • transportation,
  • textiles
  • paper,
  • fixed constructions,
  • physical,
  • electricity,
• London
  • basic necessities of life,
  • chemistry,
  • metallurgy,
• Munich
  • mechanical,
  • lighting,
  • heater,
  • armament,
  • blasting

Summary of skills

As Napoleon Bonaparte said: " A good sketch is better than a long speech." 

Who said it was simple?

No… this graphic is not sponsored by the Ibuprophene…

Other abilities

The JUB divisions are also responsible for:

• Fixing the costs of the procedure and the damages (preamble 7, rules of procedure of the unified jurisdiction (18th project)),
• procedure management (Chapter 8 of rules of procedure of the unified jurisdiction (18th project)).