To initiate proceedings before the Unified Patent Court (UPC)

by Hanna Wennås


Gavel on table. Photo.

The new Unitary Patent system, including the Unified Patent Court (UPC), was launched on 1 June 2023. The UPC is a court common to the Contracting Member States, in other words member states which are part of the Agreement on a Unified Patent Court (UPCA). It has jurisdiction on European Patents (or European Patent applications which were pending on 1 June 2023 or have been filed after that date) that have not been opted out from the exclusive competence of the Court, European patents with unitary effect (Unitary Patents, UP) and supplementary protection certificates issued for products protected by a patent. Since 1 June 2023, the Court of First Instance has received 160 cases of which 67 were infringement actions and 24 were revocation actions.[1] Below, we will present some provisions and information that are good to know about when initiating proceedings before the UPC.

Initiating proceedings before the Court of First Instance

The UPC comprises a Court of First Instance, a Court of Appeal and a Registry. Further, there is an Administrative Committee, a Budget Committee and an Advisory Committee, set up to ensure the effective implementation and operation of the UPCA.

The Court of First Instance comprises of a central division, local divisions and a regional division. There are 13 local divisions, for example in Vienna, Brussels, Helsinki and Copenhagen. The Nordic Baltic Regional Division, for Sweden, Latvia, Estonia and Lithuania, has its seat in Stockholm. The central division has its seat in Paris, with sections in Milan and Munich. The cases at the central division are distributed between the units with regard to their technical domain. The Court of Appeal is in Luxembourg.[2]

The competence of the divisions of the Court of First Instance is regulated in article 33 of the UPCA. It is important to note that the competent division depends on the action brought before the Court (the actions which the Court has exclusive competence over are stated in article 32 of the UPCA). For example, an action for actual infringement of a patent shall be brought before the local division hosted by the Contracting Member State where the actual infringement has occurred, or the regional division in which that Contracting Member State participates. Alternatively, the local division hosted by the Contracting Member State where the defendant has its residence, or principal place of business, or in the absence of residence or principal place of business, its place of business, or the regional division in which that Contracting Member State participates. However, there are exceptions. Furthermore, if the Contracting Member State concerned does not host a local division and does not participate in a regional division, actions shall be brought before the central division. The parties may agree to bring actions stated in article 32.1 (a-h) of the UPCA before the division of their choice, including the central division.

A counterclaim for revocation may be brought in the case of an action for infringement. The local or regional division concerned shall, after having heard the parties, have the discretion to proceed with both the action for infringement and the counterclaim for revocation. However, it can also refer the counterclaim for revocation for decision to the central division and suspend or proceed with the action for infringement or, with the agreement of the parties, refer the case for decision to the central division.

The language of proceedings is regulated in article 49 of the UPCA. The language of proceedings before any local or regional division shall be an official European Union language which is the official language or one of the official languages of the Contracting Member State hosting the relevant division, or the official language(s) designated by Contracting Member States sharing a regional division. However, there are exceptions to this provision. Regarding the central division, the language of proceedings shall be the language in which the patent concerned was granted.

In rule 4.1 of the Rules of Procedure of the Unified Patent Court it is provided that written pleadings and other documents shall be signed and lodged at the Registry or relevant sub-registry in electronic form and the parties shall make use of the official forms available online. The Court has a Case Management System were actions, applications and other submissions can be filed before the UPC.[3]

What needs to be stated in, for example, a Statement of claim is set out in the Rules of Procedure of the Unified Patent Court. For a Statement of claim to be deemed to have been lodged Court fees must be paid. Court fees shall be fixed by the Administrative Committee. They shall consist of a fixed fee and a value-based fee. The value-based fee shall be paid when an action has a value of more than 500,000 euros.[4] The defendant shall lodge a Statement of defence within three months of service of the Statement of claim.

In rule 206.1 of the Rules of Procedure of the Unified Patent Court it is stated that an application for provisional measures may be lodged by a party before or after main proceedings on the merits of the case have been started before the Court. However, it is important to note that a person who considers it likely that an application for provisional measures against him or her as a defendant may be lodged before the Court in the near future can file a Protective letter in accordance with rule 207. The Protective letter may for example include a challenge to the facts expected to be relied on by the presumed applicant and the reasons why any application for provisional measures should be rejected.

Final comments

There are several benefits of the UPC. For example, it is more practical and less expensive for an applicant to only have to bring an action before one court instead of several national courts. The process at UPC should in general also be much faster. Yet, the UPC is less than one year old and is therefore still relatively new to most. It may initially take time for applicants, defendants and their representatives to learn and get familiar with the proceedings before the UPC.

Information for this article has been gathered from the UPCA and the Rules of Procedure of the Unified Patent Court, if not stated otherwise.
[1] UPC, Case load of the Court during 2023
[2] Regarding this paragraph see the following links: UPC, Locations and Administrative Committee, Decision of the Administrative Committee under Article 87 (2) UPCA amending the Agreement
[3] UPC, Case management System
[4] Administrative Committee, Table of Court Fees

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