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UPC: HOW WILL THE NEW COURT WORK?
This is part of our series of articles on the UPC.
We have outlined the new system and the availability of the “opt out” for the patentee to avoid this. The position of licensees and possibly infringing parties under the new system has been considered. Here, we turn to take a brief look at the structure and procedures of the new court.
Court divisions and locations
The court comprises a court of appeal in Luxembourg, two “central divisions” as well as various “local” (single country) and “regional” (groups of countries) divisions.
Due to the location of the various courts and the composition of judges being partly dependent on location (see below), there will inevitably be a degree of forum shopping by potential litigants. As courts try to attract litigants to use their services, over time there may be developments towards some courts being seen as more “pro-patentee” or “anti-patentee”.
Originally, it was intended that the central divisions would be located in London, Munich and Paris. Now that the UK is no longer part of the new system following Brexit, it cannot host a court. Munich and Paris each host a central division court, with the third to be decided. Until the third location is decided Munich will handle mechanical engineering cases, chemistry and metallurgy with Paris handling everything else.
The only confirmed regional division is the Nordic Baltic Regional Division located in Stockholm. A further regional division is likely to cover Bulgaria, Greece, Cyprus, Romania and Slovenia.
The full list of locations, including the confirmed local divisions, are listed on the UPC website here.
The courts have both legal and technical judges and each court has a multinational mix of judges. At first instance, a court has three legally qualified judges. One or two judges will be from the country of the court, depending on how many patent cases the national courts of that country take each year, i.e., how much patent experience they have. At least one judge will come from another member state, selected from a pool of judges. Any involved party (including the court itself) can request that the local/regional division court be bolstered by the addition of a technically qualified judge.
A central division court comprises two legally qualified judges each from a different member state, plus a technically qualified judge selected from the pool.
The court of appeal comprises three legally qualified judges each from a different member state, plus two technically qualified judges.
What will each of the divisions do?
Infringement cases must be brought before the local or regional division in which the infringer has residence/place of business, or where the actual/threatened infringement has taken place.
Any counterclaim for invalidity must be brought where the infringement action has been launched. However, that local/regional division can decide whether to keep both parts of the case, bifurcate and refer the counterclaim to the central division (and potentially proceed with or suspend the infringement action), or to refer both parts to the relevant central division (with the agreement of all parties).
Standalone (non-counterclaim) revocation actions must be brought before the relevant central division, depending on the technical field of the invention. However, any subsequent infringement action may be brought before any competent division who will then have the same discretion described above, regarding where the infringement action is heard.
It is intended that cases should be dealt with predominantly in writing and in a streamlined manner. For example, claimants will be required to set out all facts and arguments at an early stage and defendants will have only a few months to respond and counterclaim.
What should I do to prepare?
If you are a patentee or exclusive licensee and you have suspicions that your patent (including classical European patent “bundles”), might be vulnerable to a central revocation action when the Unified Patent Court (UPC) takes effect, consider opting your patent(s) out of the jurisdiction of the UPC. If you are content to remain in the jurisdiction of the court, ensure that you have well-organised records of any information that would help you to defend your patent against an attack. As mentioned, the court procedure rules will require a full response within just months of an initial action being brought.
Likewise, there is an impact on possible infringers of the short time period allowed by the UPC rules for a defendant to respond to a claim. Ensure that you are well-informed about any patents which you might be at risk of infringing, and that you are well-prepared for any need to prepare and file a response in a short time-frame. This might include filing a counterclaim for patent invalidity so, again, be ready with information and/or arguments in support of this.
If you would like support in relation to any aspect of the UPC, please contact us. This article should not be taken as legal advice, it is for guidance only.