Unified European Patent Court

On 10 and 11 December 2012, the European Union Competitiveness Council, bringing together European industry ministers and then the European Parliament, agreed on the creation of a "European patent with unitary effect". An agreement on a Unified Jurisdiction of the patent was signed on February 19, 2013 by 24 member states of the European Union, thus completing the "patent package" for the implementation of the unitary patent.

At present, the European patent proprietor must bring legal action before the competent court of each Member State where his patent has been validated. The Regulation “Brussels I” leaves it open to the court of the defendant's domicile or to the court of the place of infringement, that is to say the place of the damage. Unlike actions based on a "Community" (or European) trademark or model registration, it is not possible to obtain a European-wide ban on infringement of a European patent.

To remedy this, a unified European Patent Court (JUB) is established, whose decisions are applicable throughout the territory of the signatory States to the Unified Patent Court Agreement.

Only the Member States of the European Union can accede to this agreement which will enter into force at the same time as the unitary patent.

Competence of the Unified Jurisdiction. This court has jurisdiction to settle disputes relating to:
  • European patents with unitary effect (unitary European patents);
  • Supplementary protection certificates (SPC) based on a unitary European patent or on a European patent;
  • European patents;
  • Applications for unitary patents or European patents.

The jurisdiction of the Unified Jurisdiction is exclusive. However, the Agreement provides for a transitional period of seven years during which the national courts will remain competent for European patents. The proprietor of a European patent filed before the end of that period may exclude, by a declaration of derogation, the competence of the Unified Jurisdiction for his patent ("opt-out"). He may then, if necessary, revert to that decision ("opt-in") as long as no action is taken on the patent concerned. This option applies only to European patents, not to European patents with unitary effect (precisely because they are unitary).

The derogation and its withdrawal shall take effect as from their registration in the registry. A period of sunrise is foreseen before the entry into force of the system, during which it will be possible to pre-register the declarations of exemption (“opt-out”). This early registration will in practice be very useful for patent holders wishing to opt for the derogation, enabling them to avoid a third party to be able to challenge a patent before the unified court on the day when the system enters into force without the option for the derogation having had time to be recorded by the Registry.

Finally, it should be noted that the Unified Jurisdiction is not competent for the following actions:
  • Actions involving a national patent or a European patent for which the jurisdiction of the United Jurisdiction has been withdrawn (“opt-out”),
  • Claims for ownership of the patent,
  • Actions relating to the remuneration of an employee's invention,
  • Contractual actions,
  • Actions for unfair competition.
Bodies of the Jurisdiction. The unified patent jurisdiction consists of a court of first instance, a court of appeal and a registry. The court of first instance has a central division (with a seat in Paris and two sections in London and Munich) as well as several local and regional divisions in the member states that are party to the agreement. The Court of Appeal shall have its seat in Luxemburg.

Division of competence of divisions. Local divisions may be chosen by the applicant under the “Brussels I” Regulation (place of damage or domicile of a defendant).

For cases brought before the central division, the distribution of cases will depend on their position in the international technical classification:
  • London will be competent for the common necessities of life (shoes, hangers ...), chemistry and metallurgy;
  • Munich will be involved in mechanical, lighting, heating, armament and saving;
  • Paris will deal with the other cases, i.e. industrial techniques, transport, textiles, paper, construction, physics and electricity (including optics, electronics and telecommunications).
The central division has exclusive competence for applications for the declaration of non-infringement of patents as their principal claim and applications for declaration of non-infringement. The local divisions will, however, be competent to rule on an application for nullity by way of counterclaim.

If a party seizes a central division of an application for a declaration of non-infringement, the proprietor of the patent has a period of three months to seize a local division of an infringement application and the central division will then be obliged to stay to adjudicate. The patentee can thus choose the local division that suits him best and avoid the counterfeiter "torpedo" his choice by initiating the first trial before the central division.

A local division hearing an application for infringement may, in the face of a counter-claim for a declaration of invalidity:
  • decide on the whole case;
  • seize the central division of the case for the invalidity of the patent and stay proceedings on the infringement;
  • return the entire file to the central division.
Language. The language used for the trial is:
  • with the local divisions, that of the country where the division is located;
  • with the central division, the language of the patent granting procedure, knowing that 75% of European patents are filed in English, 20% in German and 5% in French.
Probationary and provisional measures. The unified court will be able to order probation measures (similar to the French "saisie-contrefaçon") and prohibition measures.

Coming into force. The unitary patent system is expected to enter into force in the coming months on the date of entry into force of the Unified Patent Court Agreement. The Unified Jurisdiction Agreement will enter into force once it has been ratified by 13 member states (including France, Germany and the United Kingdom).

Exclusion of certain States. Some states have refused to participate in the system:
  • Spain has been excluded from the whole system;
  • Poland acceded to the unitary patent but not to the unified jurisdiction agreement;
  • Croatia has not yet acceded to the unitary patent or the unified jurisdiction agreement, but could do so in the near future.