What to do to get ready for the Unitary Patent and UPC
19th December 2022
The Unitary Patent Court (UPC) comprises a Court of First Instance, a Court of Appeal and a Registry. In addition, the Unitary Patent Court Agreement provides for a Patent Arbitration and Mediation Centre and a Training Center.
The Court of First Instance will be divided into local, regional and central divisions. The main section of the central division will be Paris with further sections in Munich and one other participating member state (previously this was London until the UK’s withdrawal from the UPC system).
The work of the central division will be divided amount the sections according to the subject matter of the patent in dispute based on IPC classification. The Munich section will deal with patents relating to mechanical engineering. The London section of the central division had been assigned patents relating to human necessities and pharmaceuticals/chemistry including genetic engineering and metallurgy. The allocation in these fields is currently undecided. The Paris section of the central division will handle patents in all other fields, including electronics, software and physics.
It appears that the London section will likely be assigned to Milan or Amsterdam but a final decision is yet to be made. The Paris and Munich sections are expected to divide the cases previously allocated to the London section until the replacement section is established in Milan or Amsterdam.
Generally, local and regional divisions will deal with infringement actions while the central division will have exclusive jurisdiction over declarations of non-infringement and revocation actions.
The Court of Appeal will be located in Luxembourg.
Appeals to the Court of Appeal are available as of right on (a) final decisions, (b) decisions which terminate proceedings as regards one of the parties and (c) decisions on certain types of orders including those relating to language, production of documents and preservation of evidence/inspection of premises, freezing orders, protective measures, and orders to communicate information.
Other types of orders may only be appealed together with the appeal against the final decision, or if the court grants leave to appeal on request by the appellant.
Appeals are to be based both on points of law and on matters of fact, but new facts and new evidence may only be introduced when the party introducing the new material could not reasonably have been expected to submit them during proceedings before the Court of First Instance.
Appeals against final decisions will cause that decision to be suspended, while appeals against interim orders made in pending cases will not stay the main proceedings, albeit that the Court of First Instance will not give a decision in the main proceedings before a decision of the Court of Appeal on any in-suit applications.
The Court of Appeal may either overturn the decision of the Court of First Instance and give a final decision, or refer the case back to the Court of First Instance.
The Court will include both legally qualified and technically qualified judges, who will sit in panels of three (Court of First Instance) or five (Court of Appeal) judges. Local divisions may ask (on their own or on the request of one of the parties) to have an extra technically-qualified judge added.
A Patent Mediation and Arbitration Centre with seats in Ljubljana and Lisbon will be established. The Centre will provide facilities for mediation and arbitration of patent disputes falling within the scope of the UPC Agreement. Any settlement reached through the use of the facilities of the Centre, including through mediation must be enforced by the contracting member states. However, a patent may not be revoked or limited in mediation or arbitration proceedings.
A training facility for judges has also been established in Budapest since 2014 although Hungary has not yet ratified the UPC agreement.
It appears the structure of the UPC will improve access to the European patent system in all parts of the EU and provide simpler, quicker and more efficient judicial procedures.
This article continues FRKelly's series of articles covering the upcoming UP/UPC. For an overview on the Unified Patent Court, check out Stephen Murphy's article here. Make sure to keep up with all the articles on the topic here.
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