In the first of a series of articles about the new Unitary Patent and the Unified Patent Court, we provide an overview of the revolutionary changes to patent litigation in the EU.

In arguably the biggest change to patent law in recent history, the European Patent Office and 25 participating Member States of the European Union (including the UK, Germany and France) are finalising the establishment of a Unitary Patent and the Unified Patent Court (UPC).

The Unitary Patent will be a patent capable of enforcement across all of the participating Member States and the UPC will be a court with exclusive jurisdiction over European Patents and European Patents with unitary effect (subject to a transitional period and opt-outs).

The UPC is expected to open in early 2017 (subject to ratification by Member States) and the rules and regulations governing the process and procedures were published towards the end of last year. In this article we will introduce this new court and explore how it will operate.

Participating Countries

Those EU Member States currently participating in the UPC are shown in blue on the map below.  As the map demonstrates, a larger number of states, including non-Member States, are currently signatories to the 1973 European Patent Convention that established the current European patent system.  The Court of Justice of the European Union has ruled that only Member States can be parties to the UPC Agreement.

Currently there are 25 participating Member States, including the UK, France, Germany, Italy and Ireland. Perhaps the most significant absence from the list of participating members is Spain.

Spain has even challenged the establishment of a unitary patent system in the CJEU. It complained, amongst other things, that the translation requirements imposed by the new system was discriminatory to individuals whose first language was not English, Spanish or French. Although this challenge was dismissed, other Member States such as Poland and Croatia have adopted a “wait and see” approach.

Unified Patent Court Structure

The Court of First Instance is divided into three Divisions: Local, Regional and Central:

• The Local and Regional divisions primarily deal with infringement cases and have discretion to retain revocation counterclaims, bifurcate or stay whilst sending revocation to the central division.
• The Central division has jurisdiction primarily over validity issues, but not necessarily if they arise in a counterclaim.

The UPC Locations

• Court of Appeal: Luxembourg
• Central Division: Paris (seat)
• Specialist Divisions of Central Division: (i) Paris (performing operations, transport; textiles, paper; fixed constructions; physics; electricity); (ii) Munich (mechanical engineering, lighting, heating, weapons, blasting); and (iii) London (human necessities; chemistry, metallurgy)
• Regional Divisions: Nordic/Baltic; Hungary and Croatia; Czech and Slovak Republics; Romania, Bulgaria, Greece and Cyprus
• Local Divisions: London; Dusseldorf, Munich, Mannheim and Hamburg; Paris; The Hague; Brussels; Milan; Helsinki; Copenhagen; Dublin; Vienna; Ljubljana
• Mediation and Arbitration Centres: Lisbon and Ljubljana

UPC Judges

Local and Regional Divisions will hear matters before a multinational panel of 3 legally qualified judges.  If a case is particularly complex, parties or judges can request an additional technically qualified judge. The Central Division will have multinational panels of 3 judges (2 legal; 1 technical). However, parties in the Court of First Instance can agree to have their case heard by a single legally qualified judge. The Court of Appeal will have multinational panels of 5 judges (3 legal; 2 technical).

Language of Proceedings

The default position is as follows:

• Local Division: the official (or one of the official) languages of the member state hosting the local division.
• Regional Division: official language designated by the regional member states.
• Central Division: language in which the patent was granted.
• Court of Appeal: language of the Court of First Instance.

There are however exceptions to the rule, which include:

• Allowing Member States to designate one or more of the official languages of the EPO, i.e. English, German or French, in addition to or instead of the official language as the language of proceedings of their local or regional division.
• The possiblity of changing from the language of local or regional division to language of the patent.

Transitional Period

As set out above, there will be a 7-year transitional period. During this period actions for the revocation or infringement of existing European patent (not unitary patents) may still be brought in national courts. There is provision in the regulations for this transitional period to be extended for an additional period of 7 years.  After this time, only those European patents that have been “opted out” during the transitional period can be litigated in national courts.

Conclusion

We will explore some of the more detailed aspects of the UPC and the strategic considerations for businesses in future blog posts.  See all of our articles about the UPC here.  If you have any queries about these issues, please contact our patent litigation specialists Victoria Wright and Nicholas Mitchell.