Forum-shopping at the UPC

In the forthcoming UPC patentees will have several options when deciding where to file their disputes, and analysing each option may empower them to influence proceedings in their favour. Paul Kavanagh and Dylan Balbirnie of Dechert explain more.

Article 1 of the Unified Patent Court (UPC) agreement declares the UPC to be a “court common to the contracting member states”. However, within the “common” court there will be numerous divisions, a number of which may be competent to hear any given dispute. Yet, each division will have its own particular characteristics. This article considers the scope for ‘division-shopping’ within the UPC and the factors that litigants should keep in mind when doing so.

There are currently three ways in which the owner of an invention can obtain pan-EU patent protection. The first is to file separate patent applications in each of the jurisdictions in which a patent is desired. The second is for the owner of the invention to make a single application under the Patent Cooperation Treaty (PCT). This process allows applicants to apply for patent protection in any number of the countries that are signatories to the PCT through one central application. The application is examined separately in each jurisdiction and, if successful, the applicant obtains rights in each jurisdiction which are equivalent to having a national patent in that jurisdiction.

The final option is the European patent route. Under this system the application process is fully centralised. The applicant applies to the European Patent Office (EPO), which examines the application on behalf of all the member countries of the European Patent Convention that the applicant has designated. If the application is successful, the applicant will have rights equivalent to a national patent in each designated jurisdiction.