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The UPC preparatory committee aims to complete its work by mid 2016 with a view to the UPC opening at the start of 2017. However it will not be possible to register a unitary patent, and the UPC will not come into force, until the first day of the fourth month after 13 member states ratify the UPC Agreement including France, Germany and the United Kingdom. In February 2016 the 9 member states who had ratified the UPC Agreement were Austria, Belgium, Denmark, Finland, France, Luxembourg, Malta, Portugal and Sweden.

Switzerland and Norway are not members of the European Union and therefore cannot participate in the unitary patent system.  Spain and Croatia have not yet signed up to the unitary patent system but could do so at any time. Although Poland has signed up to the unitary patent it is generally accepted that accepting the jurisdiction of the UPC is a prerequisite for the unitary patent having effect in a country and therefore Poland would have to sign and ratify the UPC Agreement before unitary patents could take effect there.

The cost of filing and prosecuting a unitary patent will be the same as that for a European patent before the EPO at present and will depend on a number of factors including the length of the patent, the number of claims and the amount of correspondence between the EPO and a patent attorney during prosecution.

The UPC is split into the Court of First Instance and the Court of Appeal.  The Court of First Instance will include a Central Division seated in Paris with sections in London and Munich, as well as Local Divisions for individual member states participating in the unitary patent system and Regional Divisions, for groups of member states participating in the unitary patent system.  Which division of the Court of First Instance proceedings will be in depends on a number of factors including whether the claim is for infringement or invalidity, where the infringement has taken place or where the infringer is based, and the type of technology. The Court of Appeal is located in Luxembourg. 

The language of proceedings, (that is the language of any written pleadings and communications, and of the oral hearing and judgment), will depend on the court and the division.  In the Local and Regional Divisions the language will be the official language (or one of the official languages) of the member state hosting the Local or Regional Division.  In the Central Division, proceedings will be in the language the patent was granted in (i.e. English, French or German). The language of proceedings before the Court of Appeal will be the language of proceedings before the Court of First Instance. There are, however, certain exceptions to the rules, for example, the parties may agree to use the language of the patent in the Court of First Instance as well as the Court of Appeal.

You cannot opt-out a unitary patent from the exclusive jurisdiction of the UPC.  However, for the first 7 years after the UPC Agreement comes into force (known as the ‘transitional period’), owners of European patents, European patent applications and SPCs (not based on a unitary patent) can opt-out of the exclusive jurisdiction of the UPC unless an action has already been brought before the UPC. There has been some debate about the jurisdiction of the UPC for European patents that have been opted out. Whilst not binding, the UPC preparatory committee has indicated that their interpretation of the UPC Agreement is that proceedings cannot be brought before the UPC for opted-out European patents/SPCs.  

Whilst the administrative details are being finalised, it is anticipated that there will be a “sunrise period” in which the UPC Registry will accept applications to opt out prior to the UPC opening, thereby ensuring that opt-outs can be in place from day one of the UPC.  Such a sunrise period is provided for under the Protocol on the Provisional Application of the UPC Agreement and the UPC Rules of Procedure.

It will be possible to withdraw an opt-out from the UPC’s jurisdiction at any time as long as proceedings have not been commenced in the national courts in respect of that European patent, European patent application or SPC. Once the opt-out has been withdrawn a patentee cannot elect to opt out that European patent, European patent application or SPC again.

Claims for infringement, provisional/protective measures and injunctions, damages or compensation derived from provisional protection and/or prior use shall be brought before either the Local/Regional Division in the member state:

  • where the actual or threatened infringement has occurred; or
  • where the defendant has residence or principle place of business or, in the absence of the former, the infringer’s place of business

If neither of the above apply, or the member state does not have a Local or Regional Division, then the proceedings will be before the Central Division.

Claims for revocation or non-infringement will normally be brought before the Central Division (unless an action for infringement between the same parties and for the same patent has already been brought before a Local or Regional Division, in which case these actions may only be brought before the same Local/Regional Division).

Where a counterclaim for revocation is filed responding to a claim for infringement, the Local/Regional Division may:

  • proceed with both actions;
  • refer the counterclaim for revocation to the Central Division (and either suspend or continue with the infringement proceedings); or
  • refer the whole case to the Central Division, with the agreement of the parties.

An exclusive licensee is entitled to bring actions before the UPC except where prohibited by the licence agreement. A non-exclusive licensee is not entitled to bring actions before the UPC unless expressly permitted to do so by the licence agreement. In both cases, the proprietor of the patent must be given prior notice and shall be entitled to join the action.

A search and seizure order will be referred to by the UPC as an order to preserve evidence (saisie) and an order for inspection. Upon the production by the applicant of reasonably available evidence to support a claim of infringement or imminent infringement, the UPC may, even before the commencement of proceedings on the merits of the case, order the inspection of premises and the physical seizure of the infringing products. An order may be made without notice to the other party where any delay is likely to cause irreparable harm to the proprietor of the patent, or where there is a demonstrable risk of evidence being destroyed. Despite the explicit reference to the French term, Saisie, the requirement for “reasonably available evidence” appears to impose a slightly higher threshold than that adopted in France but potentially a lower threshold that that adopted by the English courts.

Yes, parties will be able to be represented before the UPC by either a lawyer authorised to practise in the UK (or any of the contracting member states) or a European patent attorney who has acquired additional appropriate qualifications, such as a European Litigation Patent Certificate.

Yes, unitary patents supplement and do not replace the existing patent system.

When making a claim for infringement, revocation or a declaration of non-infringement the claimant must provide in their statement of claim information on any relevant prior or pending proceedings before the European Patent Office (EPO). The UPC may choose to stay its proceedings pending the decision of the EPO and, of its own motion or at the request of a party, may request that EPO proceedings are accelerated.

A protective letter may be filed by a prospective defendant at the UPC in anticipation of an application for provisional measures being lodged by a patentee.  Whether any protective letter has been filed is one of the factors that the UPC will take into account when deciding whether to grant an injunction without hearing the defendant or whether an oral hearing is required.  It will therefore likely be a very useful tool for parties being threatened with provisional measures. The protective letter will not be made public when filed but, should an application for provisional measures be lodged, a copy shall be forwarded to the applicant. A fee is payable on filing a protective letter. If no application for provisional measures has been lodged within six months, the protective letter will be removed from the register unless a 6-month extension fee has been paid. Further extensions will be permissible upon payment of further extension fees.

 

 




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