Patents

Unitary Patent Court

EU Regulation (nariadenie (EÚ) 1257/ 2012) itself provides that a European patent with unitary effect confers on its proprietor the right to prevent third parties from committing the acts against which it confers protection in the territory of the participating Member States in which it has unitary effect, the scope of that right being uniform in all participating Member States in which the patent has unitary effect. This underlines the need to link patent protection to an effective and uniform patent litigation system. The European patent system with unitary effect would be a half-baked and toothless system without the existence of a corresponding instrument, which has become the Unified Patent Court. As stated in point 24 of the preamble to Regulation (EU) 1257/2012, the establishment of the Unified Patent Court to adjudicate on cases relating to the European patent with unitary effect is necessary to ensure the proper functioning of this patent, the consistency of case law and thus legal certainty and cost-effectiveness for patent proprietors.

The Agreement on the Unified Patent Court (UPC Agreement) creates a special court system set up outside the institutional and judicial framework of the EU - the Unified Patent Court. The Unified Patent Court is a common court of the EU Member States that are party to the UPC Agreement.

The UPC Agreement is an international treaty concluded exclusively between EU Member States without the participation of the EU and third countries. It was opened for signature by EU Member States in February 2013 and has 25 signatories, of which 17 participating Member States have so far ratified the Agreement (Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, Sweden and Austria).

The Slovak version of the UPC Agreement is available in the Official Journal of the EU https://eur-lex.europa.eu/legal-content/SK/TXT/HTML/?uri=OJ:C:2013:175:FULL .

The UPC Agreement entered into force on 1 June 2023 and triggered the functioning of the entire European patent system with unitary effect.  As of January 2022, the Protocol on the provisional application of the UPC Agreement was applied, which enabled the preparatory activities necessary for a smooth and seamless launch of the entire system to be carried out.

The Unified Patent Court is composed of the Court of First Instance, the Court of Appeal and the Registry. The Court of First Instance is decentralised, consisting of a central division in Paris and Munich and local and regional divisions. The local division is established at the request of a Contracting State. However, the number of local divisions in a Contracting State shall be limited to a maximum of four. Regional divisions shall be established at the request of two or more States Parties. An overview of established local and regional divisions is available at https: https://www.unified-patent-court.org/en/court/locations.The Court of Appeal shall have its seat in Luxembourg.

Only a national of a Contracting State may be appointed as a judge of the Unified Patent Court. Two types of judges are needed for the Court's work, legally qualified judges and technically qualified judges. A legally qualified judge has the qualifications required for appointment as a judge in the Contracting State of which he is a national. A technically qualified judge who is appointed for a particular field or fields of technology shall have a university degree and demonstrate expertise in the relevant field of technology as well as knowledge of substantive and procedural civil law relating to patent litigation.

The jurisdiction of the Unified Patent Court covers not only European patents with unitary effect (including supplementary protection certificates granted for a product protected by a European patent with unitary effect) but also classical European patents (including supplementary protection certificates granted for a product protected by a classical European patent) validated in the territory of the Contracting States.

Infringement proceedings relating to European patents with unitary effect and classical European patents shall be decided by the local or regional division of the Court of First Instance according to the place of infringement, and revocation proceedings shall be decided by the central division.

The decision of the Unified Patent Court shall, in the case of a classic European patent, apply to the territory of those Contracting Member States in which that patent has effect. For this reason, it is necessary to draw the attention of the proprietors of these patents to the so-called transitional period and the possibilities it offers.

During this transitional period of seven years, classical European patents will be subject to the dual jurisdiction of the Unified Patent Court and the national court (or other competent national authority) of the Contracting State. In principle, this means the choice during the transitional period to initiate patent infringement or revocation proceedings before a national court or before the Unified Patent Court. After the expiry of the transitional period, which may be extended for a further seven years, classical European patents will be decided exclusively by the Unified Patent Court.

Also, during the transitional period, the holder of a "classical" European patent has the possibility to opt-out, i.e. to opt out of the exclusive jurisdiction of the Unified Patent Court, which may be advantageous, for example, if the patent holder wishes to avoid the risk of a central challenge to the validity and revocation of the patent for the territories of the Contracting States. Opt-out is not possible if proceedings have already been initiated before the Unified Patent Court. Conversely, if proceedings before a national authority have not yet been initiated, it is possible to withdraw the opt-out and return to the exclusive jurisdiction of the Unified Patent Court, which may be advantageous for the proprietor in the case of enforcement. The opt-out and the withdrawal of the opt-out shall be notified to the Registry of the Unified Patent Court and shall take effect upon registration in the Register of the Unified Patent Court. The necessary instructions for exercising the opt-out are available on the website of the Unified Patent Court, and an FAQ section (https://www.unified-patent-court.org/en/faq/opt-out#faqs) is also dedicated to the opt-out.

The court fee for a patent infringement action before the Unified Patent Court consists of a fixed (basic) fee of €11,000 and a fee based on the value of the dispute exceeding a predetermined ceiling (this starts at a value of the dispute between €500,000 and €750,000, where the fee is €2,500, and ends at a value of the dispute of more than €50,000,000, where the fee is €325,000). The fee for an application for revocation of a patent is €20 000.

The costs of the successful party are generally borne by the unsuccessful party, the amount of the costs being graduated according to the value of the dispute. There are 10 levels of ceiling, the lowest for a value in dispute of up to €250,000, where the ceiling is €38,000, the highest for a value in dispute of more than €50,000,000, where the ceiling is €2,000,000. If the amount of the costs would threaten the economic existence of the unsuccessful party, in particular if that party is a small and medium-sized enterprise, a non-profit organisation, a university, a public research institution or a natural person, the court may, on application by the unsuccessful party, reduce the applicable ceiling for determining the amount of the costs.

It shall be compulsory for parties to proceedings before the Unified Patent Court to be represented by lawyers qualified to do so in the Contracting State or by European patent attorneys with appropriate qualifications.

Patent disputes may also be settled by mediation and arbitration. The Centre for Mediation and Arbitration in Patent Matters, with offices in Ljubljana and Lisbon, will provide tools for mediation and arbitration of patent disputes falling within the scope of the UPC Agreement. A European patent with unitary effect or a traditional European patent cannot be revoked or limited by mediation or arbitration.

Useful links:

https://www.unified-patent-court.org/en
https://www.epo.org/applying/european/unitary/upc.html