Unified Patent Court Agreement

KEY POINTS

Scope

The Unified Patent Court Agreement (UPCA) applies to:

• European patents with unitary effect;
• supplementary protection certificates issued for products protected by a European patent;
• European patents without unitary effect;
• European patent applications that are pending on the date of application of this agreement or that are filed after that date.

The agreement is open for any Member State to join.

Location and structure

• The Unified Patent Court (UPC) consists of a Court of First Instance (CFI), a Court of Appeal and a Registry.
• The CFI will have central, regional and local divisions. The central division will be based in Paris with a section in Munich (an additional section could be designated in the future).
• The Court of Appeal will be based in Luxembourg along with the Registry.

Transitional period

• A 7-year transitional period will come into effect once the agreement has been applied. This may be extended for a further 7 years by a decision of the Administrative Committee.
• During this transitional period:
  • an action for infringement or for revocation of a European patent (but not for a European patent with unitary effect) may still be brought before a national court or other competent national authority;
  • an action for infringement or for declaration of invalidity of a supplementary protection certificate, issued for a product protected by a European patent, may also be brought before a national court or other competent national authority;
  • the holder of, or applicant for, a European patent or the holder of a supplementary protection certificate may opt out from the exclusive powers of the UPC, by notifying their opt-out to the Registry at the latest 1 month before the end of the transitional period.

Judges

• Judges are appointed by the Administrative Committee.
• Some judges will be legally qualified; others technically qualified.
• The pool of judges selected must include at least one technical judge for each field of technology.
• The judges will be allocated to divisions by the President of the CFI where required by the agreement or the related statute. This could be, for instance, at the request of a local or regional division in the case of a counterclaim for revocation of a patent.
• No judge may hold any other occupation whether paid or unpaid. They may, however, hold judicial functions at national level.

Sources of law

The UPC will base its decisions on:

• EU law, including Regulations (EU) 1257/2012 and (EU) 1260/2012;
• the UPCA;
• the Convention on the Grant of European Patents;
• other international agreements applicable to patents and binding on all the participating Member States; and
• national law.

Competence

The UPC will have exclusive powers over a number of issues in the participating Member States, including actions for:

• actual or threatened infringements of European patents and supplementary protection certificates and related defences, including counterclaims concerning licences;
• provisional and protective measures and injunctions;
• revocation of European patents; and
• declaration of invalidity of supplementary protection certificates.