Once the UPCA and the UPC come into effect (and after the transitional period), the court system will have exclusive jurisdiction over UPs and all EPs (unless the latter have been opted out of the system). The UPC also has jurisdiction over supplementary protection certificates (SPCs), unless they have been opted out or are an SPC originating from an opted out EP (which are automatically deemed to be opted out).
What action goes where?
- Infringement claims can be brought in local/regional divisions where the infringement occurs
- Revocation actions must be brought before the central division unless brought as a counterclaim where they can be heard with the infringement action or transferred to the central division by the panel hearing the infringement action
- The central division also has exclusive jurisdiction over declarations of non-infringement
Opt-out: When, Proprietors, Effect
When: During the first 7 years from the UPCA coming into effect, an opt-out from the UPC is available for EPs (this may be extended to 14 years – following an assessment after 5 years).
Once all the criteria for the UPCA to come into effect have been fulfilled, there are 4 months before it can come into force. During this period it is proposed that there will be a "sunrise" period within which all current EPs and EP applications and SPCs can register an opt-out from the UPC system, before it becomes a reality. However, this has not yet been finally agreed.
Once the UPCA is in force, proprietors can opt-out EP applications (as well as EPs already granted) and then opt back (withdraw the opt-out) when the EP comes to grant or whenever they decide. UP applications cannot be opted out at any point and are under the exclusive jurisdiction of the UPC.
SPCs for opted out EPs will automatically be opted out. Otherwise SPCs can be opted out separately (but this must be done by the EP proprietor).
Proprietors: Opt-out is for all designations of EP (as is 'opt back' in/withdrawal of opt-out) and thus all proprietors of the EP designations must opt-out together.
Effect: Opt-outs are effective for all designations of an EP. There are concerns about how quickly opt-outs will be able to be registered – the UPC Rules (16th version) try to deal with this by providing registration of opt-out with immediate effect (Rule 5).
Once opted out, the UPC has no jurisdiction over the EP and the EP must be litigated nationally (under national law). The opt-out is effective for the lifetime of the patent and beyond eg for litigation based on rights now expired or a subsequent SPC. The proprietor is free to opt back in, unless "an action" has already been brought before a national court. Once the opt-out is withdrawn, there is no further opportunity to opt-out.
However, proprietors can opt-out EP applications (as well as EPs already granted) and then opt back in (withdraw the opt-out) if they so decide post grant or if they wish to obtain a UP at grant (for which there is no opt-out option).
Not opting out:
Effect: If a patentee has not opted out of the UPC system its EP will nevertheless be subject to a dual jurisdiction of both the UPC and national courts for the duration of the transitional period (7 years initially):
- The UPC has jurisdiction for all UPs (no opt-out available) and for EPs (unless opted out) and SPCs (unless opted out or the SPC originates from an opted out EP)
- During the transitional period, national courts also have jurisdiction in relation to EPs, even if not opted out, in relation to infringement and revocation proceedings (and SPC infringement and invalidity)
Within the transitional period, the patentee can subsequently choose to opt-out of the UPC system as long as proceedings have not already been brought before the UPC. However, once a UPC court is seized of an action, the EP cannot be opted out. Similarly, once a national court is seized of an action in relation to an EP, the proprietor cannot withdraw an opt-out.
For more on the factors to consider when opting out or not doing so, see our article for Managing Intellectual Property here.