Table of Contents
The Unified Patent Court (UPC) is a new international court, common to 18 EU Member States, competent to decide on the infringement and validity of European patents with unitary effect and so-called ”classic“ European patents (without unitary effect) under the Agreement on a Unified Patent Court (UPC Agreement) of 19 February 2013. The court is also competent to treat cases relating to supplementary protection certificates.
National courts and authorities previously decided on the infringement and validity of European patents, which could lead to practical difficulties when a patent proprietor wished to enforce a European patent in several countries or when a third party sought the revocation of a European patent. Litigation in multiple countries is expensive and there is a risk of diverging decisions and thus a lack of legal certainty.
The Unified Patent Court offers a uniform, specialised, and efficient framework for patent litigation at a European level. Since its decisions are directly applicable in the contracting Member States, it avoids the need for parallel proceedings before national courts. Legal certainty will also be enhanced by the harmonisation of case law on patent infringement and validity. Finally, the Agreement on the Unified Patent Court provides for the application of uniform law with regard to the scope of the rights conferred by a European patent as well as to the exceptions and limitations to these rights.
Structure of the Unified Patent Court
The Court comprises a Court of First Instance and a Court of Appeal. A Patent Mediation and Arbitration Centre is also foreseen to foster amicable settlements between the parties to a dispute.
Court of First Instance
The Court of First Instance comprises a central division in Paris with a section in Munich. Local and regional divisions have also been set up in the Member States.
A local division has been set up in Brussels by Article 87 of the Law of 29 June 2016 on various provisions relating to the Economy. Its languages of proceedings are Dutch, French, German and English. This local division ensures local access to the Unified Patent Court and guarantees users of the patent system a procedure in their language.
For an overview of the different divisions, you can consult the page Locations of the Unified Patent Court.
Court of Appeal
The Court of Appeal has its seat in Luxembourg and decides on appeals against decisions of the Court of First Instance.
The President of the Court of Appeal is the legal representative of the UPC.
Registry
The Registry of the UPC is located at the Court of Appeal in Luxembourg and has sub-registries at every division of the Court of First Instance.
The Registry fulfils administrative and procedural tasks for the court and is led by the Registrar. A Deputy-Registrar is responsible for the sub-registries. Both, the Registrar and the Deputy-Registrar, are appointed by the Presidium.
The sub-registries are responsible for the tasks assigned to the Registry in the legal proceedings at each respective division of the Court of First instance. It is their obligation to ensure that each case lodged at their division is properly recorded in the Register. In principle, the Register is public.
The European Patent Office (EPO) also registers a copy of any decision rendered by the UPC concerning this patent in the file relating to the unitary patent.
Patent Mediation and Arbitration Centre
The UPC has a Patent Mediation and Arbitration Centre, seated in Lisbon and Ljubljana. The Centre offers support in the settlement of disputes relating to so-called “classic” European patents and European patents with unitary effect.
Furthermore, the parties may put an end to their dispute at any time during proceedings before the UPC by entering into a settlement, with or without the services of the Mediation and Arbitration Centre. The terms of this settlement may be the subject of a subsequent decision by the Court.
Committees of the UPC
Article 11 of the Agreement also establishes three committees responsible for its implementation and operation:
Competences of the UPC
The Unified Patent Court has exclusive competence in respect of civil litigation in matters relating to European patents without unitary effect, European patents with unitary effect, supplementary protection certificates issued for a product covered by such patents and European patent applications.
Article 32 of the Agreement on a Unified Patent Court provides that the UPC has exclusive competence in particular for:
- actions for actual or threatened infringements and related defences
- actions for declarations of non-infringement
- actions for provisional and protective measures and injunctions
- actions for revocation
- counterclaims for revocation.
The UPC also acts as an administrative court: it has exclusive competence in respect of actions concerning decisions of the EPO in carrying out the tasks referred to in EU Regulation No 1257/2012 on the Unitary Patent system.
The contracting Member States' national courts remain competent for actions relating to patents and supplementary protection certificates which do not come within the exclusive competence of the UPC. This applies to national patents and supplementary protection certificates based on national patents, as well as European patents without unitary effect for which the holder has made use of the possibility to opt out. National courts also have jurisdiction over entitlement proceedings, actions based on licence agreements and actions relating to compulsory licences.
Opt-out of the exclusive competence of the UPC
According to Article 83(3) of the Agreement on a Unified Patent Court (UPCA), applicants for and proprietors of a European patent without unitary effect, as well as holders of a supplementary protection certificate issued for a product protected by such a European patent, can, during a transitional period of seven years from the date of entry into force of the Agreement on the Unified Patent Court (i.e. 1 June 2023), opt out their application, patent or supplementary protection certificate from the exclusive competence of the Court. As a result, the UPC will have no jurisdiction concerning any litigation related to this application, patent or supplementary protection certificate.
Please note that it is not possible to opt out from the UPC’s competence regarding European patents with unitary effect.
For a valid opt-out, the following conditions must be met:
- The opt-out can only be made in respect of all states for which the European patent has been granted or which have been designated in the application.
- An opt-out is only possible as long as no action has been brought before the UPC in respect of this application, patent or SPC.
- The application to opt out can only be made via the Case Management System of the Court (CMS) which contains all details information on the opt-out application.
It is also possible to correct an opt-out or to withdraw an opt-out, or to file an application to remove an unauthorised application to opt out or unauthorised withdrawal of an opt-out. An opt-out can be withdrawn anytime, as long as no action has been brought before a national court in respect of the application, patent or supplementary protection certificate subject to the opt-out.
For more information about this procedure, please consult the Opt-out section on the Frequently Asked Questions page on the website of the Unified Patent Court.
Judges
The Court comprises judges from the Contracting Member States. The body of judges comprises legally qualified judges as well as technically qualified judges who, for some cases, are involved in the decisions of the UPC. Any panel of the UPC has a multinational composition.
Within the Court of First Instance, the panels of the local and regional divisions comprise three legally qualified judges. A fourth technically qualified judge may be added to the panel at the request of one of the parties or on the panel's own initiative after hearing the parties:
- In Member States with a low level of patent litigation (less than 50 proceedings per year), the panel is made up of two judges from a pool of international judges and a third judge who is a national of the state where the local division is established.
- In Member States with a substantial number of patent litigation cases, the panel is made up of two judges who are nationals of the state where the local division is established, the third judge coming from the pool of judges.
The panels of the Central Division comprise two legally qualified judges from different Member States and one technically qualified judge.
Parties may agree to have their dispute heard by a single legally qualified judge.
Within the Court of Appeal, the panels comprise five judges, including three legally qualified judges from different Member States and two technically qualified judges assigned to the panel by the President of the Court of Appeal. Only the panels hearing appeals against decisions taken by the EPO carrying out the tasks referred to in Article 9 of Regulation (EU) 1257/2012 sit as a panel consisting of three legally qualified judges from different Member States.
Case Management System (CMS)
The Case Management System (CMS) of the UPC is the IT system to file actions, applications and any other submissions before the Court. This portal is of great importance for undertaking all of the interactions with the Court and since proceedings before the UPC will be conducted mainly by electronic means.
The Court encourages the use of electronic proceedings, in particular for the filing of pleadings and the communication of evidence, as well as videoconferencing.
The Rules of Procedure of the Unified Patent Court provide that pleadings and other documents must be signed and lodged at the Registry in electronic form, unless this proves impossible due to a malfunction of the CMS. In such cases, documents may exceptionally be lodged in hard-copy form, but an electronic copy must follow as soon as practicable.
The CMS can be accessed via the UPC Case Management System website.
Procedure before the UPC
Both at first instance and on appeal, proceedings before the UPC consist of three phases: a written procedure, an interim procedure and an oral procedure. The parties begin by exchanging their written pleadings and exhibits during the written procedure. Then the interim procedure, led by the judge-rapporteur, enables the panel to check the state of the case and to take all the necessary measures to prepare for the oral procedure. This procedure also provides an opportunity to examine the possibilities for an amicable settlement of the dispute with the parties. Finally, the oral procedure consists of a hearing in which both the parties and any witnesses and experts are heard. At first instance, the entire procedure should not take more than one year.
Member States setting up a local or regional division shall determine the language(s) of proceedings before that division. These must be official languages of the European Union. For local divisions, the official language(s) of the Member State on whose territory the division is located and/or one or more of the official languages of the EPO may be designated. For the regional divisions, any official language of the EU and/or one or more of the official language(s) of the EPO may be designated.
Rule 14(2)(a) of the Rules of Procedure provides that the claimant may choose the language of the proceedings. However, if the defendant is domiciled or has his principal place of business in the Member State in which the local or regional division is situated, and the alleged infringement is limited to that Member State, the proceedings must be conducted in the official language or one of the official languages of that Member State. Member States with more than one official language may specify that the proceedings are to be conducted in the official language of the region of the defendant's domicile or principal place of business (at the choice of the claimant in the case of multiple defendants) or in the official language of the defendant (also at the choice of the claimant in the case of multiple defendants).
Before the Brussels local division of the Court of First Instance, the languages of proceedings are Dutch, French, German and English. The rules governing languages before the local division are published in the Belgian Gazette.
Before the Central Division, the language of proceedings is the language in which the European patent has been granted, i.e. English, French or German.
On appeal, the language of proceedings is the language used at first instance. However, the parties may agree to use the language in which the European patent has been granted.
Representation of parties before the UPC
Given the specificities of the procedure before the Unified Patent Court, representation before this court is mandatory. However, there is an exception for actions brought against decisions of the European Patent Office.
Parties can be represented before the UPC by lawyers authorised to practice before a court of a Contracting Member State. They can register as representatives directly in the Case Management System (CMS).
Parties may alternatively be represented by European patent attorneys who are entitled to act as professional representatives before the European Patent Office and who have appropriate qualifications such as a European Patent Litigation Certificate (EPLC). During a transitional period of one year from the entry into force of the UPCA, several other certificates will be deemed as appropriate qualifications (see Rule 12 of the Rules on the European Patent Litigation Certificate). European patent attorneys who wish to represent parties before the UPC can request via the CMS to be registered on the list of entitled representatives either by lodging their EPLC or a request for recognition of other appropriate qualifications.
Costs of proceedings
The Court’s fees framework includes fixed fees and for certain actions an additional value-based fee. A value-based fee is charged when the value of a case surpasses the set ceiling of 500,000 euro, and which increases with the value of the action. Value-based fees are based on the estimated value of the case put forward by the claimant in the Statement of Claim. The estimated value of the case shall reflect the objective interest pursued by the claimant at the time of filing the action.
Actions for which an additional value-based fee might be charged are the following:
- Infringement action
- Counterclaim for infringement
- Action for declaration of non-infringement
- Action for compensation for licence of right
- Application to determine damages
The table with the actual procedural costs can be found in the Table of Court Fees, as adopted by the Administrative Committee of the UPC.
The guidelines for establishing the value of cases, needed for the determination of the court fees, and the ceiling of recoverable costs for the representatives of the successful party can be found in the Guidelines for the determination of the court fees and the ceiling of recoverable costs, as adopted by the Administrative Committee of the UPC.
The costs of proceedings before the UPC must be put into perspective with the current costs of proceedings before national courts, which vary according to the country in which an action is to be brought. Moreover, proceedings before the UPC result in a single decision delivered by highly specialised judges and directly applicable in the Contracting Member States.
The decisions of the Court relating to European patents with unitary effect cover all the participating Member States in which these patents have unitary effect, i.e. the participating Member States in which the Agreement was in force on the date of registration of the unitary effect. For ”classic“ European patents, and unless there is an opt-out, the decisions of the Court cover the territory of the Member States that have ratified the Agreement and for which the patent has effect.
Fee reduction and reimbursement
Small and Micro-entities benefit from a 40% reduction in court fees. Furthermore, there will be reimbursements of fixed and value-based fees of up to 60% in cases of early settlement of the action by the parties, withdrawal of an action or the use of a single judge.
If the amount of payable Court fees threatens the economic existence of a party who is not a natural person, and has presented reasonably available and plausible evidence to support that the amount of Court fees threatens its economic existence, the Court may wholly or partially reimburse the fixed and value-based fee upon request by that party.
