For which patents does the UPC have competence?

The Agreement on a Unified Patent Court (the "UPCA") provides that the UPC shall have exclusive competence over:

• European patents with unitary effect (Unitary Patent)

• classic European patents  (unless opted-out by the proprietor); and

• supplementary protection certificates (SPCs) that are issued for a product protected by a Unitary Patent of a classic European patent.

This means that the UPC does not have competence and with respect to national patents and classic European patents for which the proprietor has declared an Opt-Out.

For which claims and actions does the UPC have competence?

It is not sufficient that the respective patent falls within the competence of the UPC, but the case also has to concern a claim or action for which the UPC has competence.

The claims and actions for the UPC is competent, are exhaustively listed in Art. 32 UPCA. In summary these claims and actions are:

• Patent infringement actions concerning the above-mentioned patents and SPCs, namely,

  • actions for actual or threatened infringement, and related defences, including counterclaims concerning licences,

  • actions for declarations of non-infringement,

  • actions for provisional and protective measures and injunctions,

  • actions for damages or compensation derived from the provisional protection conferred by a published patent application, and

  • actions relating to use of the invention prior to the granting of the patent or to the right based on prior use of the patent

• Revocation actions, namely

  • actions for revocation / declaration of invalidity of patents or SPCs, and

  • counterclaims for revocation / declaration of invalidity of patents or SPCs.

• Other actions for which the UPC is competent:

• actions for compensation for licences of right in a Unitary Patent, i.e. where the patentee has declared that any person may use the Unitary Patent subject to appropriate compensation, and

• actions concerning decisions of the EPO in administering the Unitary Patent.

The UPC has no competence for claims and actions outside this catalogue. This means that, for example, entitlement disputes, license agreement disputes (if no infringement claims are raised) or employed inventor disputes are outside the competence of the UPC.

Jurisdiction of the UPC

In order to bring a case before the UPC, the UPC also needs to have jurisdiction for the specific action. The jurisdiction of UPC is determined by EU Regulation No. 1215/2012 (the “Brussels Ia Regulation”) and the Lugano Convention on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (Art. 31 UPCA).

In general, the UPC has jurisdiction in the following situations:

• For revocation actions, the UPC has jurisdiction if the action aims to invalidate a Unitary Patent or those national parts of a European patent which are designated to a participating member state of the UPC.

• For all other claims and actions, particularly infringement actions, the UPC has jurisdiction if either

  • the defendant is domiciled in a participating member state of the UPC, or

  • if the defendant infringes or threatens to infringe a Unitary Patent or a European patent (or SPCs based on one of them) in a participating member state of the UPC.

If the defendant is domiciled in a participating member state of the UPC, the infringement action may even be extended to national parts of the asserted European patents which are designated to countries outside the territory of the participating member states of the UPC.

However, if an infringement action is filed against a defendant who is domiciled outside the UPC territory, the action has to be limited to those participating member states of the UPC where the actual or threatened infringement occurs.

It should be noted that, pursuant to the general rules of the Brussels Ia Regulation and Lugano Convention, infringement actions may also be extended to additional defendants if the acts of the defendants are “so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments”. This may allow to direct the infringement action also against distributors or affiliated companies of one defendant.

What is the effect of an Opt-out with respect to competence and jurisdiction of the UPC?

During a transitional period of at least seven years, the owner of a classic European patent may declare to the Registry of the UPC that it opts-out from the exclusive jurisdiction of the UPC (Art. 83 UPCA). If such opt-out is declared, the UPC has no (longer) competence for infringement actions, revocation actions or any other actions concerning this European patent.

Are “torpedo” actions still possible?

A “torpedo” action means an action, typically an action for declaration of non-infringement, which is filed in anticipation of an infringement action and which is filed with respect to a patent by a prospective defendant in a court of an EU Member State whose courts have no jurisdiction concerning the claim. Pursuant to Art. 29 Brussels Ia Regulation, the case before the truly competent court cannot proceed until the court first seized has dismissed the action, which may cause a significant delay of the infringement action. This delay tactics may, unfortunately, also apply to infringement actions before the UPC because Art. 31 UPCA refers to the Brussels Ia Regulation with respect to all essential questions regarding jurisdiction and competence.

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.