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23 June 2022Jurisdiction reports

Should you opt out or stay in?

The idea of a Europe-wide unified patent system is not new. It was first proposed at the 1973 European Patent Convention, but a lack of political will prevented its ratification.

Fast forward to 2022 and the landscape has changed. The Unitary Patent system and Unified Patent Court (UPC) will most likely come into force later this year, or at the beginning of 2023. These bodies will give patent applicants and holders the option of handing patent litigation in a centralised way, covering multiple European countries with the same framework.

“The winds are strong again and the political determination is now there to push the unified system forward,” says Tomi Konkonen, team leader and European patent attorney at Papula-Nevinpat.

“The IT systems for the court are being built, the judges have been hired, and real-estate decisions have been made for the different functions spread across the participating member states.”

A new litigation landscape

What then will be the difference between the roles of national courts and the UPC?

European patent applications will continue to be handled by the European Patent Office (EPO), and patent disputes will continue to be reviewed by national courts. The function of the Unified Patent Court is limited to jurisdiction for matters related to already granted European patents that have not been opted out, as well as for the unitary patents.

This jurisdiction covers adjudicating on infringement issues, provisional and protective measures, injunctions, damages or compensation, revocation, and supplementary protection certificates.

Under the Unitary Patent system, litigation is handled in the location where an infringement is said to have taken place. The exception is with revocation actions, which are typically handled at one of the organisation’s central divisions—namely Paris or Munich.

UPC official fees are fixed: €11,000 (US $11,800) for infringement cases and €20,000 for revocation. There are also ceilings for recoverable costs, but these depend on the value of the case.

“The UPC is being set up to handle procedures quickly. It’s aiming at fewer than 14 months for most cases,” says Konkonen. “Actions are initiated with written arguments, then interim procedures cover case-management practices, and finally oral arguments are presented.”

“Each local division of the UPC designates the languages in which litigation can be conducted, so documents and oral submissions may need to be translated. The cost of translation is borne by the party providing the documents, but these expenses may be partly claimed from the losing party,” he explains.

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