#6 UPC series: International jurisdiction and competence of UPC

This article is the sixth in a series analyzing the Unified Patent Court (“UPC”) and the provisions of the Agreement on a Unified Patent Court (“UPC Agreement”) of February 19, 2013 (the full text of the agreement is accessible here). It focuses on the provisions of the UPC Agreement dealing with the issue of international jurisdiction and competence of the UPC (Articles 31–34 UPC Agreement).

The Unified Patent Court (“UPC”) will be a court common to the contracting Member States party to the UPC Agreement, and thus part of their judicial systems. It will have exclusive competence over European patents with unitary effect (“Unitary Patent”). With respect to a traditional European patent, the UPC will be able to issue a single decision covering all those countries where that European patent is registered, unless the patent has been “opted out” of the system by the patent rightsholder. One quick preliminary clarification: for the purposes of this article, the expression “patent” refers to either a Unitary Patent or a classic European patent.

Deciding whether a court has competence to deal with a case brought before it involves two questions:

  1. Does this court have the power to deal with the subject-matter of the claim (subject-matter competence)?
  2. Does this court have power to deal with the named defendant or defendants (personal jurisdiction)?

This applies to the UPC. When it comes to subject-matter competence, the types of actions over which the UPC has exclusive competence are listed in Article 32 UPC Agreement. Such provision mentions : (a) actions for actual or threatened infringements of patents and supplementary protection certificates (“Spc”); (b) actions for declarations of non-infringement; (c) actions for provisional and protective measures and injunctions; (d) actions for revocation of patents and for declarations of invalidity of Spc; (e) counterclaims for revocation of patents and for declarations of invalidity of Spc; (f) actions for damages; (g) 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 invention; (h) actions for compensation for licenses; and (i) actions concerning decisions of the European Patent Office in carrying out the tasks cited in Article 9 of Regulation (EU) No 1257/2012.

Note, however, that not all actions related to patents are on this list. Exceptions include actions relating to licenses, inventorship, and employee inventions, which (still) fall under the competence of the national courts (see Article 32, para. 2 UPC Agreement).

Moreover, a national court retains competence over an action relating to a national patent granted by the state where the court is located and under the transitional regime of Article 83 UPC Agreement.

As for personal jurisdiction, Article 31 UPC Agreement establishes that the international jurisdiction of the UPC is governed by the following legislation: (1) European Regulation no. 1215/2012 as amended by European Regulation no. 542/2014 (which governs issues of jurisdiction and enforcement of judgments within the European Union); and (2) the Lugano Convention (which governs issues of jurisdiction and the enforcement of judgments between the European Union and EFTA countries other than Liechtenstein).

Article 33 UPC Agreement concerns the divisions of the Court of First Instance. Specifically, the Central Division of the Court of First Instance generally deals with all Article 32 types of actions for any defendant over whom the court has personal jurisdiction, and it holds exclusive competence where no local or regional division has competence.

The parties may agree to bring any action (other than one concerning actions of the European Patent Office) in any division, including the Central Division.

The competence of the local and regional divisions depends on the subject-matter of the action. In a nutshell, in cases of infringement, provisional relief, damages, or compensation for use of an invention incorporated into a published application, action shall be brought in the division where the infringement occurred or where the defendant lives or does business. Multiple defendants must have a commercial relationship and be involved in the commission of the same alleged infringement, while non-European defendants must be sued in the division where infringement occurred or in the Central Division.

Once such an action is pending, no other division can accept an action between the same parties regarding the same patent. If such an action is pending in a regional division and there is infringement in three or more regional divisions, the defendant can request transfer to the Central Division.

Counterclaims for revocation may be brought in infringement actions in local or regional courts. Those courts then may: (i) proceed with both and request to be assigned a suitable technically qualified judge; (ii) refer the counterclaim to the Central Division and suspend or proceed with the infringement action; (iii) with the agreement of the parties, refer the entire case to the Central Division.

Declarations of non-infringement and actions for revocation shall be brought in the Central Division unless there is an existing infringement action between the same parties for the same patent in another division.

If there is a pending revocation action in the Central Division, an action for infringement can be brought in the Central Division or any other competent division.

An action in the Central Division for a declaration of non-infringement will be stayed if an infringement action between the same parties relating to the same patent is brought within three months in a local or regional division.

Lastly, Article 34 UPC Agreement deals with the territorial scope of decisions of the UPC, which cover the territory of contracting member states for which the patent has effect.

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