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23 April 2015EuropePaul England and Simon Cohen

UPC: keeping a weather eye

The unitary patent and the concurrent Unified Patent Court (UPC) promise to bring the biggest changes in patent litigation in Europe since the European patent and European Patent Office were introduced more than 40 years ago.

However, it is impossible to grasp the full implications of the UPC without appreciating that the new system will not actually replace the existing one but, instead, co-exist and interact with it. This is particularly important for European patents during the transitional period and will have an important bearing on how the UPC is used.

The national courts competent to hear patent actions in the member states, whether they have contracted to the UPC agreement or not, will continue to operate after the UPC becomes operational. These will be of three kinds:

  1. National courts of the 25 member states contracted to the UPC;
  2. National courts of the two member states that have not signed the UPC (Spain and Poland); and
  3. National courts of the countries that are signatories to the European Patent Convention, but cannot join the UPC because they are not EU member states, such as Norway and Switzerland.

The courts in the second and third categories will continue to operate as they do now, largely unaffected by the UPC. The first category, however, will have a close relationship with the UPC, as we describe further below.

What about the patents themselves? At the same time as the UPC comes into force, it will also be possible to start obtaining unitary patents. The existing system of ‘classical’ European patents (we refer to them as classical to distinguish them from unitary patents) will, however, continue. National patents, those that are prosecuted and granted in the national intellectual property offices, will also continue.

What form of patent can be litigated in which type of court in the new system? It will continue to be possible to litigate national patents only in their respective national courts, no matter whether they are granted for contracting member states or not; they are unaffected by the UPC. By contrast, actions concerning infringement and revocation of unitary patents can proceed only in the UPC, and never in the national courts.

The situation for classical European patents is more complex. First, when a classical European patent is litigated in the UPC, the court’s decision applies to all the national parts of that patent for those 25 member states contracting to the UPC. This contrasts with a national action, which affects only the national part of the classical patent for the country in question.

Second, classical patents are subject to the ‘transitional period’. This period will initially last for seven years, although it can later be extended by a further seven years. During the transitional period, the UPC and the national courts both have jurisdiction to enforce or revoke a classical patent. When the transitional period has expired all infringement and revocation actions concerning classical European patents (that have not opted out—a topic we will cover in our next article) must be started in the UPC.

Simultaneous proceedings

The dual jurisdiction during the transitional period raises the possibility of actions concerning the same patent proceeding at the same time both in the national courts and in the UPC. For example, a party may in the UPC try to revoke a classical European patent that is already subject to infringement proceedings in a national court.

Or, the owner of a classical patent that is subject to revocation proceedings in a national court might at the same time wish to try to enforce it in an infringement action in the UPC. Furthermore, if revocation and infringement counterclaims were to follow in each of these actions, respectively, the UPC and national court(s) would then be seised with the same cause of action, in respect of the same patent and between the same parties. Is that possible?

This issue is addressed by amendments to the Brussels I Regulation (recast), in particular by article 71c. This article provides for ‘lis pendens’ (a notice that a lawsuit has been filed) rules. One purpose of these rules is to avoid duplicative actions concerning the same classical European patent in both the UPC and a national court of a contracting member state, during the transitional period.

The difficulty comes in determining what a duplicative action is. Articles 29 and 30 of the amended Brussels I Regulation, which are referred to in article 71c, provide for two distinct situations:

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