A guide to the UPC and the UP - Flipbook - Page 105
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The claimant will want to choose a division which it hopes will be to its benefit and/or
cause problems to the defendant. One such factor could be the language of the proceedings.
As a rule, before the local or regional divisions, the language of proceedings is the official
language of the Contracting Member State hosting the division or one or more of the official
languages of the EPO if the Contracting Member State has chosen to designate them in addition
or instead of its official language. It may be to the claimant’s advantage to choose a language
in which it is fluent, but the defendant is not, therefore making the litigation just that bit more
difficult and expensive for the defendant. 107
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There is also the issue that, whilst the Court is still new, practitioners and judges may handle
cases in a manner familiar to them from their national system, at least to the extent that this
is consistent with the UPCA and RoP. This preference for considering the Court’s law and
procedure through a national lens has been referred to as the “couleur locale”. This can be
exaggerated for a number of reasons. Firstly, there has been a great deal of training invested
in the judges. Secondly, panels in local divisions are staffed by judges from at least two
Contracting Member States and, in relation to States which are relatively inexperienced in
handling patent actions, the panel will be composed of one local judge and two international
judges from other Contracting Member States. 108 Thirdly, the Court of Appeal has a key role
in harmonising the case law and will, with time, reduce any inconsistencies in approach.
However, there remains a concern that some local divisions may compete to attract patentees
to start litigation in their jurisdiction. Some commentators have already drawn comparisons
with the patent litigation system in the US, where despite the harmonising power of the Court
of Appeals for the Federal Circuit, some regional courts play a special role such as the courts of
the Eastern District of Texas and the Western District of Texas which have procedures directed
to attracting patent litigation. 109
107
108
109
See chapter 11 (Overview of Procedure and General Procedural Provisions) paragraphs 11-107 to 11-140.
art.8 UPCA. See chapter 5 (The Structure of the Court) paragraphs 5-42 to 5-50 for a discussion of the composition of
judicial panels.
Johnson A, “Looking Forward: A User Perspective”, in The Unitary Patent System, by Pila J and Wadlow C, (Oxford and
Portland, Oregon: Hart Publishing, 2014), p.185. However, the flexibility to forum shop when deciding where to commence
patent infringement actions in the US has now been limited following the decision of the US Supreme Court in TC Heartland v
Kraft Foods Group Brands LLC, No.16-341, 22 May 2017.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 95
