In its first two years, the Unified Patent Court (UPC) has heard a wide variety of actions and been a popular venue for litigants looking to take actions involving European patents. However, so far it remains unclear to what extent the UPC will consider itself competent to hear actions involving pending European patent applications.
This is not just an academic question for those parties interested in opting out their European patents from the UPC, since an action started on a pending European patent application would have the effect of locking any resulting European patent into the UPC for the life of the patent.
Competence of the UPC
The exclusive competence of the UPC is set out in Article 32 of the Agreement on a Unified Patent Court (UPCA):
Article 32
Competence of the Court
(1) The Court shall have exclusive competence in respect of:
(a) actions for actual or threatened infringements of patents and supplementary protection certificates and related defences, including counterclaims concerning licences;
(b) actions for declarations of non-infringement of patents and supplementary protection certificates;
(c) actions for provisional and protective measures and injunctions;
(d) actions for revocation of patents and for declaration of invalidity of supplementary protection certificates;
(e) counterclaims for revocation of patents and for declaration of invalidity of supplementary protection certificates;
(f) actions for damages or compensation derived from the provisional protection conferred by a published European patent application;
(g) actions relating to the use of the invention prior to the granting of the patent or to the right based on prior use of the invention;
(h) actions for compensation for licences on the basis of Article 8 of Regulation (EU) No 1257/2012; and
(i) actions concerning decisions of the European Patent Office in carrying out the tasks referred to in Article 9 of Regulation (EU) No 1257/2012.
Just patents or applications too?
Of these grounds, Article 32(1)(f) refers explicitly to applications. However, here one might reasonably assume that damages for provisional protection would only be claimable after grant of the European patent on the basis that the UPC would need to establish that the granted claims as well as the published claims were infringed.
Article 32(1)(g) refers to a time period before grant of the European patent. However, this ground relates to prior-user defences and contextually this would seem to infer that the action would need to be heard after grant of the European patent.
Article 32(1)(i) relates to appeals from the EPO relating to issues when registering for unitary effect. But in this case, based on Article 47(7) UPCA and Rule 88(2)(b) of the Rules of Procedure (RoP) only the applicant of the European patent application or a person “adversely affected by the decision” has standing to launch such an action.
Elsewhere Article 32(1) refers only to “patents”, which is a term defined in Article 4(e)-(g) UPCA:
(e) ‘European patent’ means a patent granted under the provisions of the EPC, which does not benefit from unitary effect by virtue of Regulation (EU) No 1257/2012.
(f) ‘European patent with unitary effect’ means a patent granted under the provisions of the EPC which benefits from unitary effect by virtue of Regulation (EU) No 1257/2012.
(g) ‘Patent’ means a European patent and/or a European patent with unitary effect.
So, according to Article 4 UPCA, “patent” seems only to refer to a “patent granted under the provisions of the EPC” and not to an application. It can also be noted that Article 3 UPCA, when discussing the scope of application of the UPCA, lists European patent applications in Article 3(d) separately from European patents with unitary effect and European patents.
Applications are also covered
So based on the list of grounds in Article 32 UPCA one might think that the UPC has very limited competence over pending European patent applications. However, the RoP, in particular, do appear to reference actions relating to European patent applications. For example, Rule 312(1) RoP deals with transfers of patents and applications:
“If a patent or patent application is transferred, for one or more Contracting Member States, to another proprietor after proceedings have been started before the Court…”
In another important example, Rule 5(6) RoP addresses the validity of an opt-out:
“In the event that an action has been commenced before the [Unified Patent] Court in respect of a patent and/or an application contained in an Application to opt out prior to the date of entry of the Application to opt out …the Application to opt out shall be ineffective…” (emphasis added)
In both examples it is clearly anticipated that there may be occasions when the UPC will hear actions relating to applications. But what could those actions be?
Other possible actions
As well as actions under Article 32(1)(i), it has been argued that the UPC may agree to hear actions relating to infringement/threatened infringement or declarations of non-infringement on pending applications, in particular once they have reached an allowance notification under Rule 71(3) EPC.
This is in part based on Article 24(1)(e) UPCA which allows the UPC to refer to national law as a basis for a decision. The national law of some Contracting Member States allows actions prior to grant. For example, in Italy an infringement action can be commenced on a pending patent application, as long as the application has granted by the time of any final hearing on the merits is held.
Another possibility is that the UPCA may hear actions for ‘Arrow’ declarations – which relate to obtaining confirmation from a court that a product or process was known or obvious at a particular date (so could not be infringed by a patent having a later priority date). Since Arrow declarations are always litigated with reference to the subject matter of a patent or application, it may be the case that such actions would be considered “in respect of a patent and/or an application” as required by Rule 5(6) RoP and so serve to lock a European patent application and subsequent patent into the UPCs jurisdiction.
Finally, it is possible that a party may simply start a UPC action on a pending European patent application (with the expectation that it might be refused) and then argue that this aborted action is enough to lock the application and subsequent European patent into the jurisdiction of the UPC. In such a scenario the applicant of the pending application would probably want to respond to the claim (assuming it is served by the Registry) with an objection under Rule 19 RoP, arguing that the UPC does not have jurisdiction over an application. However, even if successful, the Rule 19 process may itself be considered an “action” that prevents a subsequent filing of a valid opt-out.
Impact on Opt-Out timing
In most cases the risk of a UPC action being launched on a pending European patent application may seem small. In particular it still remains unclear in what circumstances the UPC will in practice regard themselves as having competence over such applications. We will need to wait to see how the case law of the UPC develops in this area.
However, it should be remembered that an opt-out may be validly filed as soon as a European patent application is published. Therefore, for important cases applicants should consider the benefit of filing an opt-out early soon after publication rather than waiting until near the grant of the European patent.
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