3. Unified Patent Court System

3.1    The Unified Patent Court

3.1.1    Organisation of the Court

The AUPC creates a complete new jurisdiction: the Unified Patent Court.

The Unified Patent Court comprises two instances, a Court of First Instance and a Court of Appeal. Furthermore, a registry and various committees exist, i.a. an administrative committee and a budget committee.

The Court of First Instance is divided into various divisions. It comprises

  • a central division,
  • regional divisions and
  • local divisions.

The Court of Appeal has no divisions.

3.1.1.1    The Central Division

The central division has its seat in Paris, with sections in London and Munich.

The central division sits in a composition of two legally qualified judges which have to be nationals of different contracting states and one technically qualified judge. The central division is chaired by a legally qualified judge.

With regard to the substance of the matter, the panels of the central division are allocated in accordance with the International Patent Classification (IPC) of the World Organization for Intellectual Property (WIPO). The section in London deals with IPC classes A (human necessities) and C (chemistry, metallurgy) and the section in Munich deals with IPC class F (mechanical engineering, lighting, heating, weapons, blasting). All other substantive matter is dealt with in Paris.

3.1.1.2    Local and Regional Divisions

Any contract member state is free to apply for the installation of a local division for its territory. The decision is made by the administrative committee.

Regional divisions are built the same way for the territory of multiple member states.

Local and regional divisions comprise each three legally qualified judges. Upon request of the parties or if the court deems this to be necessary, a technically qualified judge is allocated to the panel. Again, the panel is chaired by a legally qualified judge.

Local and regional divisions have a multi-national composition, as is the case with each panel of the Unified Patent Court. Of the three legally qualified judges in principle only one is a national of the respective member state or member states hosting the local or regional division respectively. In member states where, during a period of three successive years prior or subsequent to the entry into force of the AUPC, 50 or more patent cases pro calendar year on average have been commenced, two of the three legally qualified judges are nationals of the respective member state hosting the local division. For each 100 patent cases commenced per calendar year, a contracting member state may apply for an additional local division, with a maximum of four local divisions for one member state. This may be the case in particular with Germany. It is highly likely that local divisions will be domiciled in Düsseldorf and Mannheim. Further local divisions in Hamburg and Munich are in the discussion.

3.1.1.3    The Court of Appeal

The Court of Appeal has its seat in Luxembourg.

The Court of Appeal is composed of five judges: three legally qualified judges who shall be nationals of different contracting member states and two technically qualified judges.

3.1.2    Jurisdiction

3.1.2.1    Jurisdiction as to Subject Matter

The Unified Patent Court has the exclusive jurisdiction for court proceedings provided for in art. 32 par. 1 AUPC insofar as they are based on

  • Unitary patents,
  • "classical" European patents or
  • supplemental protection certificates.

The court proceedings provided for in art. 32 par. 1 AUPC comprise in particular patent infringement actions, actions for revocation of patents (also in the form of counter claims for revocation of patents) as well as provisional injunctions.

The enumeration in art. 32 par. 1 AUPC is exclusive; any other court proceedings will remain with the jurisdiction of the national courts. The Unified Patent Court therefore has for example no jurisdiction over actions arising from patent license agreements or actions for the transfer of patents and patent applications filed by a third party which came into the position of the invention in bad faith.

The Unified Patent Court will therefore not only have jurisdiction with regard to Unitary Patents but also for "classical" European patents, i.e. for European patens without unitary effect. For a transitional period, the patent owner may give a declaration that his European patent shall not fall under the jurisdiction of the Unified Patent Court. This transitional period will last seven years and may be prolonged for further seven years. However, thereafter all European patents will fall under the jurisdiction of the Unified Patent Court. The only alternative will be to file a national patent application.

3.1.2.2    The Competence of Central, Local and Regional Divisions

The parties may agree on a division to be competent for infringement and revocation actions. If no such agreement is concluded the following rules apply:

3.1.2.2.1    Patent Infringement Actions

Patent infringement actions are to be filed with the local or regional division at the domicile of the defendant or at the place where the patent infringement took place or threatens to take place.

The central division is competent for infringement actions if the defendant has no domicile in any contracting member state or if in the respective member state no local or regional division exist.

The central division has furthermore jurisdiction over actions for declaration of non-infringement of a patent. Such action pending with the central division is stayed if, within three months upon filing the declaration action, patent infringement proceedings based on the same patent are commenced between the same parties at a local or regional division. This safeguards that infringement proceedings cannot be withdrawn from a local or regional division against the will of the plaintiff.

However, there is an exception to this rule in case the alleged infringement has taken place in the territory of at least three regional divisions. Then, upon request of the defendant, the regional division shall transfer the case to the central division (art. 33 par. 2 AUPC). This exception makes infringement actions before the regional division less attractive because in case of a presumably massive patent infringement the plaintiff must fear that the case is transferred to the central division. Such transfer may cause a loss of time and has potentially the disadvantage of a change of language of the proceedings. It may further have the disadvantage that not the principle of bifurcation will apply but rather that the central division will most likely hear both actions, i.e. infringement action and revocation action, at the same time. This may cause an additional loss of time.

3.1.2.2.2    Revocation Actions

Revocation actions are to be filed with the central division.

Counterclaims for revocation of patents may also be filed with the local or regional division where a respective patent infringement action is pending. It is then in the discretion of the local or regional division

  • to decide on both actions and to seek the aid of a technically qualified judge,
  • to transfer the revocation action to the central division and to stay or continue the infringement action, or
  • to transfer the whole case to the central division upon consent of both parties.

Therefore it will in principle possible that a local division practices a procedure as it is currently done by the German patent infringement courts, i.e. that revocation actions are transferred to the central division and to stay infringement actions only if there is a high likelihood that patent will be revoked.

Revocation actions do not require prior opposition proceedings before the EPO. Pending opposition proceedings before the EPO do not block revocation actions before the Unified Patent Court. However, the Unified Patent Court may stay its proceedings in such a case if a rapid decision may be expected from the EPO.

3.1.3    Qualification of the Judges

Legally qualified judges shall possess the qualifications required for appointment for judicial offices in a contracting member state.

Technically qualified judges shall have a university degree and proven expertise in a field of technology. They are appointed from a pool of judges on a case by case basis for a certain technical field.

According to art. 15 par. 1 AUPC judges shall ensure the highest standards of competence and shall have proven experience in the field of patent litigation. This requirement can hardly be balanced with the further requirement of a multi-national composition of all panels of the Unitary Patent Court. The problem is that in the vast majority of the contracting member states only a few or no patent litigation at all is commenced. Judges from such contracting states will have little or no experience in the field of patent litigation. However, the AUPC solves this conflict of objectives by letting it suffice that judges have only theoretical knowledge which can be obtained by training. Whether this will safeguard confidence of the potential plaintiffs in the qualification of the panels of the Unified Patent Court remains to be seen.

3.2    Rules of Procedure

The main features of the proceedings are outlined in the AUPC. For details the AUPC refers to rules of procedure which still need to be created. The signatory states have set up a preparatory committee which has developed draft rules of procedure. The current draft of 31 May 2013 comprises 382 rules.

3.2.1    Stages of Proceedings

The court proceedings are divided into three parts:

First there is an exchange of briefs. In principle only four briefs are to be exchanged (statement of claim, statement of defense, reply to statement and rejoinder to the reply) which shall safeguard a speedy procedure.

The written procedure is followed by an interim procedure which may include an interim conference led by the judge-rapporteur and which may be held as a video or telephone conference. Thereafter again written submissions may be exchanged.

Finally, an oral hearing will be held before the entire panel which is led by the presiding judge.

3.2.2    Language of the Proceedings

Before the central division the language of the proceedings is always the language in which the patent was granted.

The language of the proceedings before a local division is in principle the official language of the hosting member state. Notwithstanding the above, the respective member state may designate one of the official languages of the EPO (English, French or German) as the language of the proceedings before the respective local division. The same applies for proceedings before the regional divisions whereby the respective contracting member states determine the official language of one of the contracting member states as language of the proceedings.

The parties may agree on the use of the language in which the patent was granted as language of the proceedings, subject to approval by the competent panel. If the panel objects, the parties may request that the case will be referred to the central division.

Furthermore, the president of the Court of First Instance may, on the grounds of fairness, decide on the use of the language in which the patent was granted as the language of the proceedings upon request of one of the parties and after having heard the other party and the court panel.

The language of the proceedings before the Court of Appeal is the language of the proceedings before the Court of First Instance, unless the parties agree on the use of the language in which the patent was granted as language of the proceedings. Subject to an agreement by the parties, the Court of Appeal may decide on another official language of a contracting member state as language of the proceedings.