22 April 2016

The below article is outdated and does not reflect new developments since its publication. You will find up-to-date information about the Unified Patent Court and the Unitary Patent at gowlingwlg.com/upc

The Unified Patent Court (UPC) is the biggest change European patent law has seen for decades and there remain questions regarding how it will operate and what it will mean for patent owners. We address some of the common queries and concerns below.

What, Why and When?

  • The UPC is a new court for resolving patent disputes in Europe. It will be able to resolve disputes relating to existing EPs and newly created Unitary Patents.
  • The Court is expected to be operational in early 2017, although from mid to late 2016 there will be a period of 'provisional' application during which the necessary administrative arrangements can be finalised and parties can take preparatory steps, such as registering an opt out (see below).
  • The UPC is intended to replace the current fragmented and costly system of enforcing EPs in Europe. Because EPs are bundles of national rights they currently have to be litigated in the national court of each country in which the EP has been validated (i.e. up to 35 countries), which is costly, time consuming and can lead to inconsistent decisions. By ensuring a single decision is binding in all EU member states (with the exception of Spain, Poland and Croatia), the UPC will address these issues.

Is the UPC mandatory?

The UPC will apply to existing and newly granted EPs and UPs. However, during the transitional period (initially a period of seven years):

  • Proceedings in relation to EPs (but not UPs) can be commenced before the UPC or the national courts, which have concurrent jurisdiction.
  • Patent owners can register an opt out in respect of any of their EP patents (but not UPs) which is intended to ensure that proceedings in relation to that patent take place before the national courts. This opt out can be withdrawn at any time, provided litigation has not been commenced. For guidance on whether to opt-out see our Opt-out? Brochure.

The UPC will not apply to national patents or to EPs validated in non-participating countries (i.e. Spain, Poland and Croatia and EPC contracting states outside the EU). Such patents will still need to be enforced in the national courts.

Where is the court?

The UPC comprises of various 'local divisions' and a Court of Appeal and Registry based in Luxembourg:

  • Local Divisions are hosted by participating member states (although not all states will host a Local Division). Proceedings for infringement will normally be commenced in a Local Division.
  • The Central Division has 'sections' in London and Munich and its seat in Paris. Cases will be distributed according to the subject classification of the patent in issue. Revocation proceedings and proceedings for declarations of non-infringement (DNI) must be commenced before the Central Division, although revocation proceedings can be moved to a local division in certain circumstances.
  • All the UPC courts will operate with a multinational panel of judges, including technical judges where necessary. Parties can request a single judge in certain circumstances.

How much will it cost?

The cost of commencing proceedings in the UPC will depend on the nature of the dispute. For certain types of proceedings, including an infringement action, the court fee will depend on the value of the dispute, but will be at least 11,000. For other types of proceedings only a fixed fee will be payable.

The UPC will be a 'loser pays' system where the losing party is responsible for the successful party's costs. However, the amount which the losing party has to contribute will be capped according to the value of the dispute.

The rules on court fees and recoverable costs can be found here and published guidance for determining the value of a case in the UPC can be found here.

Are interim injunctions available?

Yes. A wide range of provisional and protective measures are available to litigants in the UPC, including:

  • Preservation and inspection of evidence.
  • Orders to produce evidence.
  • Seizure or delivery up.
  • Freezing orders.
  • Interim costs orders.
  • Preliminary injunctions.

Applications can be granted on an 'ex parte' basis. However, before deciding whether to grant interim relief, the court will take into account the outcome of any opposition proceedings, the urgency of the case, whether the defendant has been heard, whether any protective letter has been filed and the balance of convenience. Compared to the current approach of the High Court of England and Wales, it seems likely that the UPC will be more willing to grant interim relief.

Do I need to use local lawyers?

No, although the UPCA states that parties must be represented by:

  • Lawyers authorised to practise before a court of a Contracting Member State (i.e. any Gowling WLG lawyer based in the UK, Germany or France); or
  • European Patent Attorneys entitled to act as professional representatives before the European Patent Office who have appropriate qualifications such as a European Patent Litigation Certificate

Gowling WLG lawyers are therefore free to act in proceedings before any Local or Central Division.

However, we also appreciate the value of working with patent attorneys and/or local lawyers where necessary. This will be particularly important as the court develops its early case law, as national customs and practices may persist in certain Local Divisions. We have a network of trusted local advisors and patent attorneys to ensure clients are able to build a team tailored to the location of the proceedings and the technology in issue.

How can I learn more?

For further information on the UPC or advice and guidance as to how to prepare for it coming into force in 2017, please speak to Nick CunninghamMichael Carter or another member of our patent team.

NOT LEGAL ADVICE. Information made available on this website in any form is for information purposes only. It is not, and should not be taken as, legal advice. You should not rely on, or take or fail to take any action based upon this information. Never disregard professional legal advice or delay in seeking legal advice because of something you have read on this website. Gowling WLG professionals will be pleased to discuss resolutions to specific legal concerns you may have.