The fourth article in this series dealt with how the Unified Patent Court (UPC) will try to circumvent variations between national court systems, and this fifth article will look at the options for bringing infringement and validity actions before the Court and whether those actions will be determined by the same division of the Court or will be heard separately.
The UPC will have exclusive competence in respect of actions for actual or threatened infringements of Unitary patents, European patents not opted out of the exclusive jurisdiction of the Court, and supplementary protection certificates (SPCs); as well as actions for provisional and protective measures and injunctions, and actions relating to the use of the invention prior to the granting of the patent; each of which should be brought before a local or regional division of the Court. The competence of the Court also extends to declarations of non-infringement and revocation and invalidity, each of which is to be disposed of before the central division.
Under the Agreement on a UPC, if an action is pending before a certain division of the Court, further actions between the same parties on the same patent cannot be brought before any other division. In the case that an action between the same parties on the same patent is brought before several different divisions, the division first seized will dispose of the whole case and actions subsequently filed before other divisions will be declared inadmissible.
So how will this regime be applied in the case of a counterclaim for revocation?
If an infringement action is initiated before the central division and a counterclaim for invalidity is also brought before the central division, both infringement and validity will be dealt with together.
If an infringement action is brought before a local or regional division and a defendant files a counterclaim for revocation, the local or regional division does have discretion to proceed with both the infringement and the revocation before a panel having an additionally-appointed, technically-qualified judge.
Alternatively, the local or regional division can refer the counterclaim for revocation to the central division, and either proceed itself with the infringement action or suspend the infringement action until the central division decides on the revocation. The infringement proceedings will be suspended where there is a high likelihood that the claims of the patent will be held to be invalid in the revocation procedure. If the infringement action is not stayed, the judge-rapporteur will accelerate revocation proceedings before the central division, and the hearing date on the revocation will be set prior to the hearing date of the infringement.
There is also the possibility of referring the entire case for decision to the central division if the parties so agree.
The same discretion applies in the case of a central revocation action in which a subsequent claim for infringement is made before a local or regional division – the local or regional division can either proceed with both the infringement and revocation action, or to allow the revocation to remain before the central division (at its own discretion or with the agreement of the parties).
Although a local/regional division has discretion to transfer cases to/from the central division, both claimants and defendants should consider whether transfer is acceptable in the case of an application for transfer made by another party. A first consideration lies with the additional formal requirements and costs – for example, the language of the proceedings might change and, where the language of the proceedings before the local/regional division is not the language in which the patent was granted, a translation of any written pleadings (or excerpts thereof) might be ordered. Moreover, the panel of judges presiding before the central division might not necessarily include a local judge as is the case with the panel sitting before a local/regional division, which could be of consequence to the decisive outcome of the case.
Furthermore, parties should also consider that it will also be possible to bring revocation actions independently of opposition proceedings before the European Patent Office (EPO), and parties will be obliged to inform the Court of any pending revocation, limitation or opposition proceedings before the EPO. The Court will stay its proceedings and wait for the outcome of the EPO opposition proceedings when a rapid decision may be expected from the EPO and, to this end, the Court (or any party) will be able to request that the EPO opposition proceedings are accelerated. Alternatively, as is the present case with national Court proceedings, the Court can allow the revocation proceedings to go ahead, without waiting the outcome of the EPO proceedings. The parallel and concurrent possibility of opposition proceedings before the EPO and revocation proceedings before the Court provide a further level of complexity for parties seeking revocation of a patent; and opponents/applicants should consider which avenue is the more appropriate choice, given some avenues allow for concurrent proceedings and some avenues will result in lengthier stays.