European Patents: Which Cases Can be Brought Before the Unified Patent Court (UPC)?


The UPC Agreement will enter into force soon. We are in the midst of the Sunrise Period. Opt-outs are already possible to prevent European Patents (EPs) from falling under the jurisdiction of the UPC (cf. our article dated 21 March 2023). Yet, what happens if an EP owner does not opt out of the UPC's jurisdiction? The following article considers several legal scenarios in this situation.

I. In Principle: Exclusive Jurisdiction of the UPC

The UPC does not only have exclusive jurisdiction over complaints relating to European Patents with unitary effect (Unitary Patents) which will be granted as of 1 June 2023. The UPC also has exclusive jurisdiction for actions relating to EPs, provided that the individual EP is granted for a UPC member state, no opt-out has been declared and the respective complaint is filed as of 01 June 2023.

II. Cases Pending Before Member States’ Courts Are Not Affected

The UPC Agreement does not affect the jurisdiction of the national courts for infringement and validity cases which are already pending before 1 June 2023. The national courts will decide these cases for the respective UPC member state.

III. Is a Case Pending in a Member State Court Preempted From Being Brought Before the UPC?

To avoid contradicting decisions, the same subject matter should only be decided either by the UPC or by a member state court. Thus, an infringement complaint based on an EP that is pending e.g. before a district court in Germany will likely preclude the UPC from ruling on the same question of infringement.

The UPC could carve out issues pending before national courts in order to prevent e.g. diverging infringement decisions on the same infringing act with respect to the same national part of an EP vice versa the same defendant. In doing so, the UPC would limit its decision on an EP to matters not already pending in a UPC member state. This would not limit the UPC from deciding on infringement of the EP in the context of a different subject matter. In particular, the UPC could decide on infringement of the same EP to the extent that a different act of infringement, infringement in other UPC member states or infringement against another defendant is alleged.

If a case is pending before a member state court and the plaintiff wants to obtain a comprehensive UPC decision on its subject matter, the respective national laws generally allow for the plaintiff to withdraw the pending case (cf. e.g. Section 269 German Civil Procedure Code). Upon withdrawal from the national court, the UPC can decide the subject matter of the complaint with effect for all UPC member states.

IV. Which Principles Apply in Nullity Cases?

As long as there is no opt-out on an EP, nullity complaints with effect for all member states can be brought against this EP before the UPC as of 1 June 2023.

A risk of conflicting decisions arises if a plaintiff brings a nullity complaint against an EP before the UPC in addition to a nullity complaint against the same EP that is already pending before a member state court. In such cases, the UPC will likely avoid the risk of conflicting decisions by performing a carve-out. Under the carve-out, the UPC would decide the nullity complaint only with respect to those parts of the EP that are not already subject of a nullity action that is pending before a member state court.

Other plaintiffs’ nullity complaints against this EP are a different subject matter. The UPC would therefore likely still decide them in full, meaning with effect to all UPC member states. In this case, nullity complaints from other plaintiffs’ that are pending before national courts against the same EP should not preempt a comprehensive UPC decision.