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What is the Jurisdiction of the UPC?

A key aim of the Unified Patent Court (UPC) is to provide a more streamlined and consistent approach to patent litigation in the participating member states, by providing a single forum for patent litigation.  However, the proposals overlay existing national litigation systems.  It is therefore important to understand exactly what is the jurisdiction of the new UPC, and what might happen where the boundaries are unclear.

1. WHAT TYPE OF PATENTS DOES THE UPC HAVE JURISDICTION OVER?

Patents

1.1 The draft Agreement on a Unified Patent Court (the "Agreement") states  that the UPC shall have exclusive competence over:

(a) European patents that designate one or more contracting Member States (i.e. that designate any EU Member State except for Spain) ("Relevant EPs"); and

(b) the new Unitary Patent.

1.2 This means that the UPC does not have competence over national patents, or European patents that do not designate a contracting Member State.  To the extent that a Relevant EP designates Spain or any country which is not an EU Member State (note that there are 11 non-Member State signatories to the European Patent Convention), then the UPC can only have jurisdiction to judge disputes for the  contracting Member States.  The other countries will retain competence to judge their designation of the EP themselves.

1.3 This is a clear split.  However, inevitably the consequence of this split jurisdiction is that there will continue to be separate jurisprudence applicable to related patents.  As an extreme example, where identically worded patents are granted say as a Unitary Patent, a Relevant EP designating Italy, and a national patent in Spain, the ultimate decision on infringement of each could lie with three different courts, namely the CJEU for the Unitary Patent , the Appeal Division of the new UPC for the Italian EP, and the Spanish Supreme Court for the Spanish national patent.  Clearly this does not guarantee a uniform result.

Supplementary protection certificates (SPCs)

1.4 The Agreement also states  that the UPC shall have exclusive competence over SPCs.

1.5 "Supplementary protection certificate" is defined  by reference to the SPC Regulations pursuant to SPCs are granted. 
Taken at face value would mean that all SPCs, whether in relation to a national patent, Relevant EP, or Unitary Patent, fall under the jurisdiction of the UPC.  However, Article 3 of the Agreement clarifies that the Agreement shall apply to any SPC issued for a "patent".  "Patent" is limited to a Relevant EP or Unitary Patent.  Therefore, we assume that, notwithstanding the wider definition of SPC in the Agreement, the exclusive jurisdiction of the UPC must be understood to exclude SPCs based on national or non-Relevant EP patents.

2. WHAT ISSUES DOES THE UPC HAVE JURISDICTION OVER?

2.1 Article 15 of the Agreement sets out the areas in which the UPC has "exclusive" competence (over Relevant EP and Unitary Patents).  In summary these areas are:

2.2 Infringement

(a) actions for infringement (including threatened infringement) of patents and SPCs (see above), and related defences, including counterclaims concerning licences

(b) actions for declarations of non-infringement

(c) actions for provisional and protective measures and injunctions

(d) actions for damages or compensation derived from the provisional protection conferred by a published patent application

(e) 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

2.3 Validity

(a) actions for revocation of patents

(b) counterclaims for revocation of patents

2.4 Other

(a) actions on compensation for licences of right

(b) actions concerning decisions of the EPO in administering the Unitary Patent

"Related defences & licences"

2.5 There is likely to be scope for argument as to what falls within "related defences, including counterclaims concerning licences" in an infringement action. 

2.6 For example, commonly in high-tech disputes, the underlying dispute is as to the appropriate terms for a licence of a patent portfolio.  This can bring into play a range of issues such as the impact of fair reasonable and non-discriminatory (FRAND) licence obligations for essential patents, or the availability of certain remedies, such as injunctions where a licensing commitment has been made. 

2.7 Counterclaims relating to licences are clearly contemplated by Article 15(a).  However, arguably the availability of a final injunction is a question as to the appropriate remedy for infringement, rather than a defence to infringement (and does not clearly fall within Article 15(c)).  We expect that remedies for infringement, however complex, would fall within the ambit of an action for infringement, but this is not expressly stated.  Similarly, competition law issues are often raised in patent cases, but not always strictly as a defence per se. 

2.8 It is also noteworthy that "related defences" only fall within the exclusive jurisdiction of the UPC in the case of infringement actions.  However, these sorts of licence arguments may form the basis for seeking a declaration of non-infringement (as opposed to technical arguments that there is no infringement).  We assume that these arguments would nonetheless fall within the UPC's exclusive competence to deal with actions for declarations of non-infringement.

3. WHAT WILL HAPPEN IN RELATION TO OTHER ISSUES?

3.1 The Agreement refers to the "exclusive" jurisdiction of the UPC, which could be taken to imply that it also has a "non-exclusive" jurisdiction.  However, Article 15(2) of the Agreement makes it clear that this is not the case:

"The national courts remain competent for actions related to European patents and European patents with Unitary effect which do not come within the exclusive competence of the UPC". 

So, for example, notwithstanding its unitary nature, the question of entitlement to a Unitary Patent is not within the competence of the UPC (subject to any argument that lack of entitlement provides a "related defence" to an infringement action).

3.2 It will also be interesting to see how the Agreement will be interpreted in light of contractual jurisdiction provisions that purport to give national courts or arbitral panels the exclusive jurisdiction to resolve patent-related disputes (whether pre-existing, or introduced with the aim of avoiding the UPC's jurisdiction).  It appears that the draft Agreement seeks to nonetheless override these provisions where the issue is one that is stated as being within the exclusive competence of the UPC.  However, it is possible to envisage more complex scenarios where the contract in issue raises questions, say, of both patent validity and interpretation of other contractual provisions. 

Katie McConnell, Of Counsel
Hogan Lovells International LLP

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