Jurisdictional Competence
General Competence of the « Court »
Principle
The UPC has jurisdiction over any dispute related to (Article 3 of the Agreement on a Unified Patent Court):
- A European patent
- with unitary effect;
- without unitary effect;
- A patent application;
- A supplementary protection certificate (SPC) granted for a patent
- this is somewhat unusual since an SPC has a national effect and not a unitary one…
- and when referring to a patent, it does not necessarily mean a « European » patent…
Sunrise Period or the Opt-Out Principle
To establish a smooth transition period, a sunrise period was created for invalidity and infringement actions related to:
- A European patent; or
- A supplementary protection certificate granted 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 initiate legal proceedings before national courts (Article 83.1 of the Agreement on a Unified Patent Court).
The proprietor may even prevent any proceedings before the UPC by notifying the UPC Registry (the so-called opt-out procedure, Article 83.3 of the Agreement on a Unified Patent Court, but for this to work, no proceedings must have already been initiated before the UPC).
The proprietor may withdraw this notification if desired (Article 83.4 of the Agreement on a Unified Patent Court, but for this to work, no proceedings must have already been initiated before a national court).
Competence of the Central Division: Invalidity
Principle
Unless an infringement action has been brought before a local/regional division, the central division has jurisdiction over actions (Article 33.4 of the Agreement on a Unified Patent Court):
- for invalidity (Article 32.1(d) of the Agreement on a Unified Patent Court);
- for declarations of non-infringement (Article 32.1(b) of the Agreement on a Unified Patent Court).
Universal Competence
Furthermore, the central division has jurisdiction as soon as the parties agree that it does (Article 33.7 of the Agreement on a Unified Patent Court).
Infringement Action Following an Invalidity Action
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 the Agreement on a Unified Patent Court).
Infringement Action Following a Declaration of Non-Infringement Action
If a declaration of non-infringement action has been brought before the central division, this action is stayed if an infringement action (involving the same parties and the same patent) is brought before a local/regional division (Article 33.6 of the Agreement on a Unified Patent Court).
Actions Against the EPO
Actions concerning decisions taken by the European Patent Office in the exercise of its duties fall under the jurisdiction of the central division (Article 33.6 of the Agreement on a Unified Patent Court).
Competence of National/Regional Divisions: Infringement
Principle
The local/regional divisions (of the place of infringement or the defendant’s domicile/establishment) have jurisdiction (Article 33.1 of the Agreement on a Unified Patent Court) concerning:
- infringement actions (patents and SPCs) and including counterclaims concerning licenses (Article 32.1(a) of the Agreement on a Unified Patent Court)
- provisional and protective measures and injunctions (Article 32.1(c) of the Agreement on a Unified Patent Court)
- actions for damages arising from provisional protection (Article 32.1(f) of the Agreement on a Unified Patent Court)
- actions relating to the use of the invention prior to the grant of the patent or to the right based on prior use of the invention (Article 32.1(g) of the Agreement on a Unified Patent Court).
Universal jurisdiction
Furthermore, the local/regional division has jurisdiction as soon as the parties agree that it does (Article 33.7 of the Agreement on a Unified Patent Court).
Absence of domicile/establishment in the member states
If the defendant has no domicile/establishment in the member states, only the place of infringement may determine the jurisdiction of the local/regional division (Article 33.1 of the Agreement on a Unified Patent Court).
This may seem self-evident, but it is better to state it explicitly…
Absence of a local/regional division
If no local/regional division exists in the territory concerned, the central division then has jurisdiction (Article 32.1 of the Agreement on a Unified Patent Court).
Lis pendens and related actions
If a division is seized of a dispute (concerning the cases mentioned above), it is not possible to seize another division (including the central division) (Article 33.2 of the Agreement on a Unified Patent Court) if it involves the same parties and the same patent.
Widespread infringement
If the infringement covers the territory of more than three regional divisions, the regional division seized shall, at the request of the defendant, refer the case to the central division (Article 33.2 of the Agreement on a Unified Patent Court).
It is rather odd that this provision only applies to regional divisions and not local divisions. Indeed, at this stage, it is not even certain that more than three regional divisions will exist…
Counterclaim for revocation
It is common for the defendant to file a counterclaim for revocation when sued for infringement.
In such a case, the local/regional division may:
- rule on the counterclaim for revocation, but by requesting the assignment of a technically qualified judge (Article 33.3(a) of the Agreement on a Unified Patent Court).
- refer the counterclaim to the central division (Article 33.3(b) of the Agreement on a Unified Patent Court)
- if revocation of the patent is highly probable, a stay of proceedings concerning the infringement action is ordered (Rule 37 of the Rules of Procedure of the Unified Patent Court (18th draft)).
- if no stay of proceedings concerning the infringement action is ordered, the judge-rapporteur (Rule 40(b) of the Rules of Procedure of the Unified Patent Court (18th draft)).
- at the request of the parties, refer the entire case to the central division (Article 33.3(c) of the Agreement on a Unified Patent Court).
Technical Competencies
When the central division has legal competence, cases are distributed among the three sections of the central division based on the technical field in question:
- Paris
- industrial techniques,
- transport,
- textiles,
- paper,
- fixed constructions,
- physics,
- electricity,
- London
- human necessities,
- chemistry,
- metallurgy,
- Munich
- mechanical engineering,
- lighting,
- heating,
- weapons,
- blasting
Overview of Competencies
As Napoleon Bonaparte said: « A good sketch is better than a long speech.«
Who said it was simple?
No … this chart is not sponsored by Ibuprofen …
Other Competencies
The UPC divisions are also competent regarding:
- The fixing of costs of the proceedings and damages (Preamble 7 of the Rules of Procedure of the Unified Patent Court (18th draft)),
- the management of the proceedings (Chapter 8 of the Rules of Procedure of the Unified Patent Court (18th draft)).