UPC in a nutshell

The UPC has jurisdiction to enforce and also to invalidate any European patent with effect for all participating member states (see "In which states will the EP-UE have effect?"). This applies to all European patents, including those which were granted years ago and are still in force.

A patentee can avoid the risk of having all national parts of its European patent invalidated in the participating member states by a single stroke. The UPCA allows the patentee to opt out from the jurisdiction of the UPC. However, to be effective, such an opt-out will have to be registered before a revocation action or any other action has been filed against the patent. Hence, a patentee who fears that a competitor could try to invalidate its patent(s) should start preparing for an opt-out regarding all or some of its existing European patents well in advance of the UPCA coming into force so as to ensure that the opt-out is registered before a revocation action is filed.

The patentee can withdraw the opt-out (i.e. opt-in again) if they should later wish to make use of the central enforcement in infringement proceedings before the UPC, provided no national proceedings are pending at this time.

If a European patent is granted after (or within one month before) the entering into force of the UPCA, i.e. in May 2023 or later, the patentee can decide within one month from the date of publication of the mention of grant whether the patent shall have unitary effect in all participating member states (see "In which states will the EP-UE have effect?"). After expiry of this short term, the unitary effect can no longer be obtained. Moreover, a translation of the entire patent (claims, description and drawings, if any) into one official language of one EU member state will have to be filed together with the request. Thus, applicants for European patents should consider in good time before grant, whether, from a cost benefit perspective, unitary effect is desired and start the necessary preparations, if appropriate.



EPO - Decision of the President of the European Patent Office dated November 11, 2022 concerning the forthcoming introduction of the Unitary Patent and the possibility of requesting a delay in issuing the decision to grant a European patent in response to a communication under Rule 71(3) EPC:
https://www.epo.org/law-practice/legal-texts/official-journal/2022/11/a102.html

EPO -Notice from the European Patent Office dated November 11, 2022 concerning the forthcoming introduction of the Unitary Patent and the possibility to file early requests for unitary effect:
https://www.epo.org/law-practice/legal-texts/official-journal/2022/11/a105.html

Applicants for a European patent should consider opting out in good time before grant of the patent, since it cannot be excluded that a competitor may file an action at the UPC even before grant of the patent (see "What is the benefit of opting out a patent application?").

A patentee has the choice of enforcing its European patent either in national court proceedings or in proceedings before the UPC. If the patentee initially opted the patent to be enforced out, they must first withdraw the opt-out before filing an infringement suit at the UPC. The prospective defendant can prevent such a withdrawal of the opt-out by filing a national invalidation action. Thus, if the patentee wants to bring the action before the UPC, they should consider withdrawing the opt-out and filing the action with the UPC before contacting the prospective defendant.

The UPC has jurisdiction over the invalidation of European patents and this invalidation has effect for all participating member states (see "In which states will the EP-UE have effect?"). This provides third parties with an alternative to invalidate several national parts of a European patent (the national parts in the participating member states) in one central proceeding, unless the patentee opted out in time.

There is a transitional period of seven years (which can be extended up to 14 years) during which the UPC and national courts have shared jurisdiction in respect of traditional European patents. Parties are able, however, to opt their traditional European patents out of the UPC’s jurisdiction (see "What does the opt-out do?").

As long as no opt-out has been declared in respect to a traditional European patent, parties can thus choose whether to bring a legal action before the UPC (with effect for the whole UPC territory) or before one or more national courts (with effect only in the relevant country or countries). During the transitional period it is even possible that parallel legal actions are pending before the UPC and national courts in respect of the same European patent. For example, provisional injunction proceedings can be filed before a national court based on a traditional European patent against which a revocation action is pending before the UPC. Likewise, without an opt-out declaration having been registered in advance, a revocation action can be filed before the UPC in response to an infringement action before a national court.

Once the transitional period expires, European patent applications and traditional European patents which have not been opted out will be litigated exclusively before the UPC in the same way as EP-UEs.

Handbook Chapter

The UPC is not located at one single location but includes several divisions spread over the participating member states for political reasons. The court of first instance encompasses a central division with seat in Paris and sections in Munich and Milan. 

Besides a central division, the court of first instance also has several local and regional divisions which will allow, to a certain degree, forum shopping. Each participating state may apply for a local division (larger countries may establish up to four local divisions). Two or more member states of the UPCA can also establish one regional division together.

Local/Regional divisions of the court of first instance:

• Germany hosts four local divisions: Dusseldorf, Mannheim, Munich and Hamburg
• other local divisions:  Vienna (AT), Brussels (BE), Copenhagen (DK), Helsinki (FI), Paris (FR), Milan (IT), The Hague (NL), Lisbon (PT) and Ljubljana (SI) 
• regional division: Nordic Baltic regional division with seat in Stockholm (SE) and place of hearing in Riga (LV), Tallinn (EE) and Vilnius (LT)

Generally, local and regional divisions deal with infringement actions while the central division has exclusive jurisdiction over declarations of non-infringement and revocation actions. The Court of Appeal of the UPC is located in Luxembourg. For more information on the competence of the respective divisions, see “Are infringement and invalidity proceedings dealt with together or must invalidity actions be brought in separate proceedings?”

Handbook Chapter

The language of proceedings before any local division is any official language of the participating member state where the local division is situated, or any other language approved by the respective division (see here). The German local divisions offer German and English as language of proceedings. For regional divisions one of the official languages of the EPO can be agreed upon (e.g. the Nordic-Baltic regional division designated English as the procedural language).

The language of proceedings at the central division are held in the language in which the patent was granted. The majority of EP patent applications are in English or German. Thus, even at the central division in Paris and Milan, the proceedings will typically be conducted in English or German.

Handbook Chapter

Art. 32(1) UPCA provides an exhaustive list of cases for which the UPC will have exclusive competence. Generally, the UPC will have exclusive competence for infringement and validity actions concerning EP-UEs, and, on expiry of the transitional period, traditional European patents and applications. During the transitional period, actions regarding a European Patent may also be brought before national courts.

Art. 32(1) UPCA

In more detail, the actions in respect of which the UPC has exclusive competence include:

• Actions for actual or threatened infringements of patents and supplementary protection certificates (SPCs) and related defences, including counterclaims concerning licences;
• Actions for a declaration of non-infringement concerning patents and SPCs;
• Actions for injunctions and provisional and protective measures;
• Actions for revocation of patents and for declaration of invalidity of SPCs;
• Counterclaims for revocation of patents and for declaration of invalidity of SPCs;
• Actions for damages or compensation derived from the provisional protection conferred by a published European patent application;
• Actions relating to the use of the invention prior to the grant of the patent or to the right based on prior use of the invention;
• Actions for compensation for licences under Article 8 of Regulation (EU) 1257/2012; and
• Actions concerning decisions of the European Patent Office in carrying out its administrative tasks referred to in Article 9 of the EP-UE Regulation.

Typically, revocation actions and declarations of non-infringement will be heard before the central division, if an infringement action is not already pending. Local and regional divisions will generally deal with infringement actions and counterclaims for revocation in the same proceeding. However, bifurcation is not prohibited. If a defendant brings a counterclaim for revocation in infringement proceedings, the respective local or regional division has the following options:

• Hearing the infringement and revocation action together;
• Referring the counterclaim for revocation to the central division, resulting in bifurcation of the two proceedings. The infringement proceedings may be suspended or proceeded; and
• With the agreement of the parties, the entire case (infringement and revocation action) may be referred to the central division.

Thus, bifurcation may occur, if and when the local or regional division decides to refer the counterclaim for revocation to the central division. But, bifurcation can also occur if a claim is pending in the central division and a subsequent claim for infringement is brought at a local or regional division. However, it is expected that, in most cases, the courts will try to avoid bifurcation and decide on infringement and validity in one and the same proceedings.

The UPC can issue the following measures:

• Seizure of evidence (Art. 60(2) UPCA)
• Inspections (Art. 60(3) UPCA)
• Interim injunctions (Art. 62 UPCA)
• Order to produce evidence (Art. 59 UPCA)

A party has the possibility to submit a protective brief to avoid decisions without notice.

Handbook Chapter

There are two ways of assessing damages according to the UPCA. The first method under Art. 68(3)(a) UPCA considers “all appropriate aspects”. In this regard it is noteworthy that the infringer's profit is no longer considered as an independent, separate type of calculation method but rather as a further calculation factor in addition to other factors stated in Art. 68 (3)(a) UPCA. These include lost profits or non-economic factors such as moral prejudice. It is to be expected that the UPC will develop case law and provide more specific guidance on the application of this rather vague provision.

Alternatively, damages may be determined under the so-called “licensing analogy” method. The damages are assessed as a lump sum based on the amount of royalties or fees which would have been due if the infringer had requested authorisation to use the patent in question.

Handbook Chapter

There is nothing comparable to discovery as known in US proceedings. Thus, the parties must establish their arguments and evidence by themselves and submit them in written briefs prior to the oral hearing. However, an application for preserving evidence and/or inspection may be lodged (called a saisie) pursuant to Art. 60 UPCA in cases where the injured party fears that the evidence might be destroyed. Such provisional measures by the court are subject to the protection of confidential information and they include for instance the physical seizure of evidence.

Additionally, the UPC may, at the request of the applicant, order an inspection of premises which will be conducted by a person appointed by the court. The applicant will not be present at this inspection but may be represented by an independent professional practitioner. Such measures may be ordered without notice.

The UPCA does not provide a provision concerning compulsory licensing. Instead the national laws of the participating member states should deal with compulsory licences for EP-UEs. Moreover, the UPC can deal with considerations that would otherwise justify a compulsory licence by e.g. not granting injunctive relief to the plaintiff (patentee), if there is an overriding public interest in the defendant's product staying on the market.

Handbook Chapter

UPC fees consist of a fixed fee, with an additional value-based fee applicable to higher value infringement actions (those exceeding a value of € 500,000). The claimant must put forward the estimated value of the case. The court may, in particular, take into account the guidelines for determining the court fees. Any disagreement regarding the fees among the parties is resolved at an interim conference. In case the court fees threaten the economic existence of a party, the court may, upon request of that party, wholly or partially reimburse the fixed and value-based fee.

Since the unsuccessful party shall bear the reasonable legal costs and expenses of the successful party (Art. 69 UPCA), the value of the lawsuit has an impact on the amount of recoverable costs the winning party may claim. However, there is a ceiling for recoverable costs at € 38,000 for proceedings valued up to and including € 250,000 and up to € 2 Million for proceedings with a value of more than € 50 Million.

The fixed fees provided for the respective proceedings are as follows:

• Infringement proceedings: € 11,000
• Interim injunctions: € 11,000
• Invalidity proceedings: € 20,000

For more information on court fees please see the Rules on Court fees and recoverable costs of the UPC.

Table of Court fees and recoverable costs

Official page (unified-patent-court.org)