The structure of the UPC: Divisions and competences

The Unified Patent Court or UPC is a new court common to the EU Member States that have signed and ratified its founding agreement. For an introduction to the unitary patent and UPC, see our post here.

A.    STRUCTURE

The UPC is structured in a Court of First Instance and a Court of Appeal. Specifically:

i)    the Courts of First Instance include:

a)   a Central Division with offices in Paris, Munich and Milan (although the Milan office will not start operating until June 2024);

b)   Local Divisions in the individual Member States that have requested them, i.e. currently: Italy, Austria, France, Germany, Portugal, Belgium, Denmark, Finland, Slovenia, Holland;

c)    Regional Divisions in common between two or more Member States that have not decided to establish individual local divisions. There is currently a single regional division which includes Estonia, Latvia, Lithuania and Sweden.

ii)   the Court of Appeal is based in Luxembourg.

In addition, the UPC system comprises:

iii)  a Registry with headquarters in Luxembourg and subsections in all Divisions; And

iv)  a Mediation and Arbitration Center with offices in Lisbon and Ljubljana.

B.    COMPETENCES OF THE FIRST INSTANCE DIVISIONS

The distribution of competence among the various divisions of the Court of First Instance substantially depends on the type of action brought, the territory, the subject matter of the patent and possibly the choice of the parties.

i)        Type of action

The Central Division deals with:

a.     actions for revocation; and

b.     actions for non-infringement.

Local and regional divisions deal with:

c.     actions for infringement;

d.     counterclaims for revocation;

e.     actions for provisional and protective measures.

In the event of a counterclaim for revocation, however, it is also possible that:

a.     the sole counterclaim is referred to the Central Division by the judging panel, which also decides whether to suspend or continue the infringement proceedings (the suspension is mandatory if it is highly likely that the patent will be revoked);

b.     the whole case is referred to the Central Division upon agreement of the parties.

In cases where multiple actions have to be brought between the same parties, and in relation to the same patent, which theoretically should be brought before different divisions, the following applies.

i)        If an action for infringement is pending, the revocation claim must be made as a counterclaim in that infringement case.

ii)       If an action for revocation is pending, the infringement claim can be submitted, either:

a)      in front of the Central Division; or

b)      before the competent Local/Regional Division, which may or may not refer the claim to the Central Division (as happens for revocation counterclaims).

iii)      If a non-infringement action is pending before the Central Division, this is suspended if, within 3 months of its filing, an infringement action is initiated before a Local/Regional Division, between the same parties or even between the exclusive licensee of the patent and the party who requests the declaration of non-infringement.

ii)      Territory

For actions falling under the responsibility of Local/Regional Divisions, the competent Division is established on the basis of two possible alternative criteria, namely:

a.     the place where the defendant has its residence / place of business; or

b.     the place where the infringement occurred or may occur.

There are, however, some peculiarities, namely:

c.     if the defendant is domiciled outside the contracting Member States, jurisdiction rests either with the Central Division or with that of the place where the infringement occurred or may occur; 

d.     if, in the application of the aforementioned criteria, the division of a Member State that does not have a local / regional division would be competent, the central division is competent.

iii)   Subject Matter

In the actions belonging to the competence of the Central Division, the division of competences between the three seats takes place on the basis of how the patent is classified according to the international classification:

a.     Milan: patents of section A (Human Needs: agriculture, food products, tobacco, clothing, jewellery, furniture, sanitary items, entertainment...), without Supplementary Protection Certificates (SPCs)

b.     Paris: patents of sections B (Execution of operations; Transport), D (Textiles), E (Buildings), G (Physics), H (Electricity), SPCs (classes A and C)

c.     Monaco: patents of section C (Chemistry and metallurgy) without SPCs, and section F (mechanical engineering; lighting; heating; weapons; explosives).

However, it should be remembered that the Milan seat was only set up in May 2023, to replace the London one which was cancelled with Brexit, so it will not be operational until June 2024; in the meantime, its competences rest with the Paris seat.

In reality, Milan also claims jurisdiction over the SPCs, which fall within sections A and C, and over the patents of section C (Chemistry and Metallurgy), which had originally been attributed to the London office.

iv)   Choice of the parties

The parties may agree to act before the division of their choice, including the Central Division.

C.    PANELS

Within the individual divisions, the cases are typically decided by panels of judges of different nationalities, who might be legally or technically qualified.

Specifically:

a.      in proceedings before a Local or Regional Division, cases will be heard by 3 legal judges; 1 technical judge may be added in the event of a counterclaim for revocation or if this is requested by the parties or by the other Judges. However, the parties may also agree that their case be heard by 1 single legally qualified judge;

b.     in proceedings before the Central Division, the panels will be made up of 2 legal judges and 1 technical judge;

c.     before the Court of Appeal, the panels will be made up of  3 legal judges and 2 technical judges.

[Last updated: July 2023]