What is the general structure of the UPC ?

The Unified Patent Court comprises a Court of First Instance and a Court of Appeal.

The Court of First Instance consists of

• a central division,

• local divisions, which are set up in individual contracting member states, and

• regional divisions, which are set up for two or more contracting member states, if they prefer to jointly establish one regional division instead of a local division.

The central division will be seated in Paris and has a sub-division in Munich. A further sub-division was originally planned to be seated in London. After Brexit and after the UK government declared to no longer participate in the UPC, London was no longer available as a court location for a EU court. Within the central division, the work will be allocated according the field of technology of the case in accordance with the IPC classes:

• The central division in Paris will handle cases concerning performing operations, transporting, textiles, paper, fixed constructions, physics, electricity (IPC classes B, D, E, G, H).

• The central division in Munich will handle cases concerning mechanical engineering, lighting, heating, weapons and blasting (IPC class F).

• Cases concerning the remaining IPC classes A and C, i.e. cases concerning human necessities (including pharmaceuticals), chemistry and metallurgy, will be split between Paris and Munich. These cases were originally allocated to the London division, which will not be established after Brexit.

Local divisions have so far been established in Austria (Vienna), Belgium (Brussels), Denmark (Copenhagen), Finland (Helsinki), France (Paris), Germany (Dusseldorf, Hamburg, Mannheim, Munich), Hungary (Budapest), Italy (Milan), the Netherlands (The Hague), Portugal (Lisbon) and Slovenia (Ljubljana).

A Nordic Baltic Regional Division located in Stockholm has been jointly established by Sweden, Lithuania, Latvia and Estonia.

The location of the Court of Appeal is Luxembourg.

How are the panels of the UPC composed?

The panels of the UPC will be multinational, i.e. composed of judges with nationalities from different contracting states.

The panels will comprise the following number of legally and technically qualified judges:

• Local and regional divisions of the Court of First Instance will be composed of:

  • three legally qualified judges

  • in addition one technically qualified may be added to the panel,

    • upon request by one of the parties,

    • if the panel deems this appropriate, or

    • if the panel also handles a counterclaim for revocation (in this case the addition is mandatory).

• Central division of the Court of First Instance:

  • two legally qualified judges, and

  • one technically qualified judge.

• Court of Appeal:

  • three legally qualified judges

  • two technically qualified judges

In the proceedings before the Court of First Instance, the parties may jointly agree to have their  case heard by a single, legally qualified judge.

Which division is competent for which types of cases?

The local or regional divisions will hear the following actions (Art. 33 (1) UPCA):

1. infringement actions, including counterclaims concerning licences,
2. actions for provisional and protective measures and injunctions, which will cover in particular preliminary injunctions,
3. actions for damages or compensation derived from the provisional protection conferred by a published patent application,
4. actions relating to the use of the invention prior to the granting of the patent or to the right based on prior use of the patent,
5. actions for compensation for licences, where the owner of the European Patent has filed a statement with the EPO to the effect that it is prepared to allow any person to use the invention as a licensee in return for appropriate consideration.

Patent infringement cases have to be brought before the local or regional division where the infringement occurred or where the defendant is seated. As a consequence, a number of different local or regional divisions might be competent, which allows certain forum shopping.

The central division will hear the following actions (Art. 33 (4) UPCA), unless an infringement action is already pending between the same parties and related to the same patent (in which case the local or regional division where the infringement matter is pending is competent to also deal with this action):

• actions for declarations of non-infringement,

• actions for revocation of patents and for declaration of invalidity of supplementary protection certificates (SPCs),

• actions for the grant or revocation of compulsory licences,

• actions against the EPO in connection with the EPO’s administration of the Unitary Patent,

• infringement actions may be brought before central division only, if the case concerns a contracting member state which does not host a central or regional division, or if the defendant does not have its residence or principal place of business outside the territory of the contracting states.

Will infringement cases and revocation cases be bifurcated or will they be heard together?

In many infringement cases, the defendant challenges the validity of the patent. The UPCA gives the court the option to either hear both, infringement and validity cases, together, or to separate them, whatever is the most appropriate procedure.

Basically, the UPCA gives the parties the opportunity to combine infringement case and revocation action: If an infringement action is pending before a local or regional division, the defendant has to file a counterclaim for revocation before the same local or regional division (Art. 33 (4) UPCA). On the other hand, if a revocation action is pending before the central division, the patentee has the option to bring a claim for infringement also before the central division.

If an infringement action is pending before the local or regional division and a counterclaim for revocation of the patent-in-suit is initiated, the local or regional division has the discretion to either

1. proceed with both the infringement case and with the counterclaim for revocation (and request the President of the Court of First Instance to allocate a technically qualified judge with qualifications and experience in the field of technology concerned), or

2. to refer the counterclaim for revocation to the central division and then either suspend or proceed with the infringement case, or

3. with agreement of the parties, refer the entire case to the central division.

It remains to be seen how the local and regional divisions will use this discretion in practice. However, it seems realistic that in most cases the local and regional divisions will hear infringement and revocation together as this is the current practice in most contracting member states of the UPC.

Why Hogan Lovells?

We are one of the very few firms that has patent litigators in virtually all major European jurisdictions who have great experience in working on cross-border litigations in multinational teams. For this reason we are exceptional well positioned to guide you through the challenges and opportunities which come with the new Unitary Patent and the UPC system. We do not only defend, we help you create and grow. We are with you from the initial idea to the global roll out. Whether you operate in a traditional industry such as life sciences, telecommunications, automotive or energy, or are part of a new generation operating at the intersection of these industries, we are the team for you.

Authored by Anna-Katharina Friese and Christian Stoll.