Revocation and bifurcation: what you should know about the UPC

There are several permutations surrounding where and when revocation claims will be heard in the Unified Patent Court, each of which will affect bifurcation. Paul England and Nigel Stoate of Taylor Wessing report.

The preparatory committee of the Unified Patent Court (UPC) has published location details of its four local divisions in Germany as well as the Munich branch of the central division. One of the German local divisions is also in Munich but will be in a different building from the central division and in a different part of the city. While there is no reason for the local division and the regional division to be physically separate in this way, it is a reminder that these divisions of the UPC have slightly different roles. This is the result of the different jurisdictional rules that apply to infringement and revocation actions.

When lodging revocation claims, the basic rule in the UPC is if no action is already lodged concerning the same parties and the same patent, and unless the parties agree otherwise, the revocation claim must always be lodged at the central division. However, if an infringement action has already been lodged in a local or regional division and it concerns the same patent and the same parties, a different rule applies.

This is that the revocation action must be lodged in the same local or regional division as the infringement action—the infringement action dictates the forum in which the revocation action must be heard. As we explained in our earlier article “Keeping it simple: lodging infringement claims in the UPC”, this will be the local or regional division in which the infringement occurs or the domicile of the defendant. It could be an advantage to the party enforcing the patent to be able to choose a division more advantageous to it, and the party wishing to revoke the patent has no option but to go along with it.