James Tumbridge, intellectual property lawyer at Pillsbury Winthrop Shaw Pitman, considers the implications of the Unified Patent Court (UPC) for Europe and whether it will help or hinder the UK’s electronics sector.
The Unified Patent Court (UPC) is the result of an agreement between 27 European countries to create a single patent for Europe (the ‘Unitary Patent’), with a single court (the UPC) to handle validity and enforcement matters. The creation of the UPC has spurred a great deal of debate in political and legal circles, as well as within industry, and many have questioned whether it is going to be beneficial to patent holders, or whether potentially it could be damaging to certain sectors of the UK economy.
Of particular concern has been the location of the UPC courts, and the approach to be adopted, which will ‘split’ infringement actions from validity actions into separate proceedings. This is known as ‘bifurcation’ and is the system that has been operating in Germany for many years. In effect, a different court will decide if you infringe a patent from the court determining if the patent is valid. This approach is not one familiar to users of the U.S. and English patent courts. The risk is that a company could be injuncted from selling a product found to infringe, only for the patent some time later to be held invalid (and by a different court).
A further concern is the structure of the court focusing on technologies in different locations, and as Paris is the forum for deciding cases related to electronics, the impact on the UK’s electronics industry is unclear. However, many believe that Paris and France will benefit from a perception that they are the new centre of excellence.
The UPC will be comprised of different divisions, each of which will have its own judges, and territorial coverage, and the local/regional divisions will serve different functions to the central division. The Central Division will have exclusive jurisdiction to determine issues of validity for Unitary Patents, which, as set out more fully below, presents significant challenges for patent owners. The Central Division will hear cases from three locations, with each being responsible for certain technologies: London will deal with pharmaceuticals and chemicals; Munich will deal with mechanical engineering; and Paris will be responsible for the remaining sectors, including electronics. Regional divisions will cover multiple jurisdictions that group together; for example, the Nordic countries might form a single regional division, whereas Holland intends to have a local division just for Holland.
Parties commencing proceedings in the UPC will need to consider the court structure, as well as the location of the defendant, which may have a consequence as to the language used in the case. Another consideration is the timeline for proceedings; the time from commencement of proceedings in the Central, Regional or Local division, to an appeal to the Court of Appeal (in Luxembourg), together with the possibility of one or more references to the Court of Justice of the European Union (CJEU), could mean the better part of a decade from start to finish.
