A guide to the UPC and the UP - Flipbook - Page 106
Rules in the UPCA on Handling more than One Action
6-80
Art.33 UPCA provides a set of rules for what will happen where there is more than one action
pending before different divisions of the Court. These are summarised in figure 6-2.
Figure 6-2: Where to File the Subsequent Action?
Where to file subsequent action?
1st Action
2nd Action – same patent, same parties
Infringement in local, regional
or central division
Declaration of non-infringement
or revocation
The same division as the initial
infringement action. If the 1st action
was in a local/regional division, that
division has a choice under art.33(3)
Infringement;
Infringement;
Provisional or protective
measures and injunctions;
Provisional or protective
measures andinjunctions;
Second action may not be brought in
any division other than the one first
seized (art.33(2)).
Action for damages arising
from provisional protection;
Action for damages arising
from provisional protection;
Actions relating to prior use; or
Actions relating to prior use; or
Actions for licensing of right in
any division
Actions for licensing of right
Revocation
Infringement
A local/regional division which then has a
choice under art.33(3) as to future conduct
of the action;
OR
Central division (art.3 3(5))
Declaration of non-infringement
Infringement
A local/regional division (DNI action
is stayed if brought within 3 months)
(art.33(6));
OR
Central division if relevant state(s) have
no local or regional division
Choice underart.33(3), the Court can decide to:
a. continue with both claims;
b. refer the revocation claim to the central division and suspend or proceed with infringement action
("birfurcation"); or
c. refer the whole case to the central division.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 96
