Back in December 2012 it was announced, in an historic agreement, that the European Parliament had adopted two regulations relating to the creation of the unitary patent. A third element of the unitary patent package, the agreement on the unified patent court, was signed in February 2013 and the EPO expected the first unitary patent to roll off the production line in Spring 2014. It’s now nearly the end of 2014 and we’ve not met the original, highly ambitious implementation date but there has been significant progress in delivering the new system.

Starting this week IPcopy is taking a look (in traditional IPcopy Q&A style^TM) at what the unitary patent package is and where we are. Unbelievably we’ve never really covered the actual structure of the new Unified Patent Court and so here, as your starter for 10, is an overview of the UPC itself.

THE COURT

Q: What is the court structure?

The Unified Patent Court (UPC) will be a single court within the member states that have ratified the UPC Agreement. There will be a Court of First Instance, an Appeal Court and a Registry.

Q: Where will the court be?

The Court of First Instance will be made up of a central division (split between its seat in Paris and sections in Munich and London) and a number of local divisions and regional divisions.

Countries may either choose to set up their own local divisions or can partner with other countries to form a regional division.

The Court of Appeal will be in Luxembourg.

Q: What cases will the different parts of the central division handle?

The cases within the central division will be allocated in dependence on their patent classification. So, Munich will get mechanical engineering, heating, lighting, weapons and blasting. London gets life sciences, chemistry and metallurgy and Paris gets everything else.

Q: What countries will be covered?

Only countries that a part of the European Union may accede to the UPC Agreement. So currently the option of joining the UPC is only available to 28 countries.

Out of the 28 EU countries, 25 have currently chosen to take part:

Austria, Belgium, Bulgaria, Republic of Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Romania, Slovakia, Slovenia, Sweden and the UK.

Three countries are outside of the UPC Agreement:

Croatia, Poland and Spain.

For the unitary patent system to begin however we don’t need all the signatories to ratify the agreement. Initially 13 of the available member states are required, including France, the UK and Germany.

Q: What general competence does the UPC have?

The UPC will have competence over traditional EP patents, unitary patents and supplementary protection certificates (SPCs) issued for products covered by such patents and patent applications. Decisions of the court will have effect in all the states that have ratified the agreement. The UPC will also have some competence over decisions of the European Patent Office related to administering the unitary patent regulations.

Q: What competence do the different divisions have?

Actions relating to infringement, provisions and protective measures and injunctions, damages or compensation derived from provisional protection and prior use can be brought before the local/regional division where the infringement occurred or where the defendant is based. Counter-claims for revocation can be heard in the local/regional division as well (though see discussion about bifurcated proceedings below).

Revocation or non-infringement actions need to be brought before the central division (unless an infringement action has already started in one of the local/regional divisions). Actions relating to EPO decisions will always be before the central division.

For infringement actions, if the alleged infringement covers multiple territories then the plaintiff can choose between the different divisions when starting the action. If the defendant is not based in the unitary patent territories then an infringement action can either be brought in the local/regional division where the alleged infringement has occurred or in the central division.

If a contracting member state of the UPC does not have either any local divisions or be part of a regional division, then in such cases, actions can be brought before the central division.

Q: What about bifurcated proceedings?

Where an infringement action before a local or regional division is met with a counter-claim for revocation, three different outcomes may result:

• The local/regional division may hear both the infringement and revocation actions together;
• The local/regional division may decide to hear the infringement action but send the revocation action to the central division;
• With the agreement of all the parties, the local/regional division may send both the infringement and revocation actions to the central division to be heard together.

Option 2 above would therefore create bifurcated proceedings and this has caused much hand-wringing amongst some interested parties concerned that some local/regional divisions may choose to bifurcate regularly and reach a decision on infringement before the central division has had a chance to decide on revocation.

The latest draft (17^th) of the Rules of Procedure of the Unified Patent Court has provisions that seek to minimise the bifurcation concerns by giving the central division the chance to speed up its revocation action.

Q: What language will be used?

The language of proceedings will be the official language (or one of the official languages) of the country hosting the local/regional division. However, a local/regional division may also designate one of the EPO’s official languages (French, German or English) as well as or instead of their own official language. The central division will use the language the patent granted and it may also be possible to use this language in some circumstances in local/regional divisions.

Q: What about transitional provisions?

There will be a transitional period after the UPC Agreement comes into force. This will initially be for 7 years but may be extended to 14 years.

During the transitional period actions in respect of traditionally validated EP patents may still be brought before national courts. Additionally, it will be possible during this period for the patent proprietor to register an opt-out in respect of a granted EP patent or pending EP patent application to take that patent or application out of the exclusive competence of the UPC.

An opt-out can only be registered if an action has not already been brought before the UPC. The opt-out can also be withdrawn at any time. An opt-out registered in respect of a patent application will continue to apply to the European patent that grants from that application. Opt-outs will remain in force for the life of the patent (unless the proprietor withdraws it).

Proprietors will be able to register opt-outs at a UPC Registry and the opt-out will become effective once it has been entered onto the Register.

Unitary patents cannot be opted out.

Q: What will it cost?

The costs of the UPC have not been defined yet. It is expected that there will be a public consultation on the fee levels at some point in 2015. Court fees will comprise a fixed fee and above a predetermined level a value based fee.

It should be noted that there will (probably) be fees for opting a European patent out from the exclusive competence  of the UPC and for withdrawing an opt-out.

Q: Who can represent clients?

Litigants in person will not be possible in the UPC so clients will require representation either by lawyers authorised to practice before a court of a contracting member state or by European Patent Attorneys who have appropriate additional qualifications enabling them to represent at the UPC.

Further instalments of this post will cover: the unitary patent, the progress that has been made in delivering the Unitary Patent System and what actions can be taken now in preparation for the start of the UP system.

Further articles on the unitary patent system can be found on IPcopy’s dedicated Unitary Patent Package page.

Mark Richardson 16 December 2014