UPC Divisions And Locations: Where Can I File Which Action?
As of June 1, 2023, patent infringement and nullity actions will be possible before the Unified Patent Court (UPC). The UPC will be able to decide on all disputes relating to Unitary Patents and European Patents, at least where no opt-out is declared and if the subject matter of the action is not already pending before a member state court (cf. our posts from March 21, 2023 and March 27, 2023). This leads to the question to which UPC division one should bring their patent action. Which divisions and location does the UPC offer to the plaintiffs and what determines which division of the UPC is competent for a case? The following post addresses these questions.
I. From Paris And Munich To Helsinki: Divisions Of The UPC In First Instance
The UPC consists of Local and Regional Divisions and a Central Division. The Central Division has its seat in Paris and a section in Munich. The fate of the second section remains to be decided: originally intended for London, it will Brexit-related possibly open in Milan instead.
Local and Regional Divisions can be found in almost all UPC member states. As a rule, there is one Local or Regional Division per member state. Germany alone has received the maximum number of four Local Divisions, seated in Dusseldorf, Munich, Mannheim and Hamburg respectively. Other Local Divisions are located in Brussels, The Hague, Helsinki, Copenhagen, Lisbon, Ljubljana, Milan, Paris and Vienna; in addition, there are Regional Divisions such as the Nordic Baltic Division in Stockholm which will conduct its hearings also in Riga, Tallinn and Vilnius.
In accordance with the structure and tasks of the Court, the UPC’s Divisions consist of judges from various jurisdictions and technical fields. The Local and Regional Divisions, which are responsible for the majority of patent infringement cases, can decide without the participation of a technically qualified judge. In contrast, the Central Division is always also staffed with technically qualified judges. These judges provide the technical expertise required to assess the various patent validity disputes that the Central Division is responsible for. All in all, this mix of legally and technically qualified judges allows the UPC’s Divisions to have a composition and expertise similar to e.g. the German Federal Patent Court’s.
II. Which Divisions Are Competent For Infringement Actions?
Under the Unified Patent Court Agreement (UPCA), plaintiffs can regularly choose from a number of competent Divisions:
- 33 (1) (a) UPCA states that the Local or Regional Division for the UPC member state in which the patent infringement took place is competent for a patent infringement case.
- 33 (1) (b) UPCA further gives competence to the Division that has jurisdiction over the member state in which the defendant has its seat.
- 33 (1) subparagraph (2) UPCA further gives competence for infringement cases to the Central Division if an infringement took place in a UPC member state and if the defendant has no seat in a UPC member state.
- 33 (1) subparagraph 3 UPCA provides that if the patent infringement took place in a UPC member state without Local or Regional Division (such as e.g. in Bulgaria or Malta) and the defendant has no seat in a member state with a UPC Division, the Central Division is always competent.
III. Which Divisions Are Competent For Nullity Actions?
With respect to questions of validity of patents, a distinction must be made between isolated nullity actions and nullity counterclaims:
- According to Art. 33 (4) clause 1 UPCA, the Central Division has a primary competence for isolated nullity actions.
- According to Art. 33 (3) (a) UPCA, a nullity counterclaim may be decided by the Local or Regional Division which decides on the pending infringement action.
- Alternatively Art. 33 (3) (b), (c) UPCA allows for the Local and Regional Divisions to refer the nullity counterclaim or (with the consent of the parties) the entire proceedings to the Central Division.
By providing these options, the UPC offers considerable flexibility to both plaintiffs and case managing judges. The UPC pairs this flexibility with a promise of mostly uniform decision on questions of validity and infringement and fast proceedings. According to its Rules of Procedure, the UPC should be able to make a first-instance decision within one year after the action has been filed. To ensure that the Local and Regional Divisions, which will decide the majority of cases, can meet these requirements also in technically complex cases, Local and Regional Divisions can ask to have a technically qualified judge assigned for the case. This gives the UPC a further advantage over the patent litigation chambers of many member states, which are often exclusively staffed with legally qualified judges.