The Unified Patent Court

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The Unified Patent Court

The Unified Patent Court

In the previous article (click here to read it) we talked about the Unitary Patent, in force since June 1st and the difference with the European and national Patent.

In this article we will analyze the role of the Unified Patent Court (UPC), a court that officially became operational on 1 June 2023.

The composition

The Unified Patent Court will be composed of:

  • a Court of First Instance, in turn composed of:
    • a Central division, based in Paris and a branch in Munich;
    • local and regional divisions, which each contracting member state can host or share with one or more other contracting member states that have designated them (to date, Italy has designated the city of Milan);
  • a Court of Appeal, based in Luxembourg;
  • a Registry, set up at the headquarters of the Court of Appeal.

Following the United Kingdom’s exit from the EU, in agreement with France and Germany, the Italian government proposed Milan as its headquarters. If the other EU member countries formalize this agreement, this office could become the second branch together with Munich.

The competence of the UPC

The UPC will be exclusively competent to decide, among others, on European and Unitary patent applications and on every aspect and case relating to the patent title (protection, disputes, claims, etc.).

The most important aspect concerns the Unitary Patent, because the exclusive competence of the UPC to decide disputes will avoid – contrary to what happens for the European Patent – the occurrence of lawsuits in the various countries in which the Unitary Patent will be effective.

In fact, the judicial procedure will be unique, regardless of the country in which the dispute arose, and the final provision will be enforceable, simultaneously, in all the EU member states in which the patent is effective and protected.

It should also be noted that the jurisdiction of the Unified Patent Court extends only to the Member States that have adhered to the Agreement on the UPC (to date, 17). For all other Member States, the Unitary Patent will remain under the jurisdiction of the national courts of those states.

However, during the transitional period of entry into force of the UPC, the exclusive jurisdiction of the latter will undergo some exceptions.

The exceptions

In fact, the holders of already granted European Patents (not of Unitary Patents, therefore), for a certain period, will also be able to choose to apply to the Unified Patent Court, instead of availing themselves of the judicial protection of one of the Member States in which protection has been sought and the patent is valid and effective.

However, if they prefer to continue pursuing this last judicial procedure, they will be able to exclude the competence of the Unified Patent Court through the opt-out procedure, valid for a transitional period of 7 years (extendable for another 7) from the entry into force of the law. ‘Agreement.

If you decide to exclude the competence of the UPC, it will always be possible to revoke this choice, by re-entering the centralized system through the opt-in procedure.

However, it should be noted that both opt-in and opt-out procedures are precluded, in the event that the European Patent is already the subject of a dispute before a national Court or before the UPC.

The actions promoted to the UPC

The actions that can be brought before the Unified Patent Court are indicated in Article 33 of the UPC Agreement:

  1. actions relating to counterfeiting, interim measures, injunctions, damages or indemnities, which must be brought before the local/regional Division in which the violation occurred or where the defendant has his residence or place of business;
  2. revocation or non-infringement actions, which must be brought before the Central Division, unless an infringement action has been brought between the same parties which refers to the same patent in a local or regional Division: in this case the appeals must be brought before the same local/regional Division;
  3. counterclaim for revocation in counterfeiting proceedings: in this case the territorial section can proceed with both actions, or refer the counterclaim for revocation to the Central Division. However, if there is agreement by the parties, the territorial section may refer the entire case to the Central Division;
  4. actions relating to the decisions of the EPO in the performance of the tasks referred to in Article 9 of Regulation (EU) 1257/2012 on unitary patent protection, which must always be brought forward by the Central Division.