A guide to the UPC and the UP - Flipbook - Page 135
Introduction
8-01
When the Unitary Patent Package was initially discussed, proprietors of European patents
expressed concern about the effect on their existing rights, particularly the potential of a
central validity attack. It was argued that interference with existing property rights would be
a breach of a fundamental right of proprietors, patents being property rights protected under
art.1 First Protocol of the European Convention on Human Rights. As a result, a fairly long
transitional period has been provided during which proprietors have a choice either to do
nothing and allow the Court to have jurisdiction over their European patents or to take steps
to prevent the Court from having jurisdiction over their European patents in which case they
are subject only to the jurisdiction of the national courts, in line with their expectations when
they filed their applications.
8-02
The transitional provisions are contained in art.83 UPCA. They have received a great deal
of attention from commentators. There are a couple of reasons for this. Firstly, the transitional
provisions are immediately applicable when the UPCA enters into force and are therefore
one of the first sets of provisions that users of the patent system will need to consider.
Secondly, although some fundamental aspects of the transitional provisions are unclear from
the UPCA itself, the RoP, specifically r.5, have gone some way to clarify certain of those matters.
8-03
The transitional provisions apply to European patents, European patent applications or SPCs
issued for products protected by European patents. 1 They do not apply to Unitary patents.
Basic Rules Applying During the Transitional Period
8-04
The following is an outline of the basic rules applying during the transitional period.
Certain aspects of the transitional provisions are mired in controversy; these controversies
are addressed below.
8-05
The Court has exclusive jurisdiction over certain specified disputes involving Unitary patents
and European patents, since, under the amendments made to the Brussels I Regulation (recast),
the Contracting Member States have transferred jurisdiction to the Court in matters governed
by the UPCA, thus replacing the national courts for such matters. 2
8-06
However, during the first seven years after the date of entry into force of the UPCA, the Court
has concurrent jurisdiction over European patents together with the national courts. 3 In other
words, although for Unitary patents the Court has exclusive jurisdiction from the entry into
force of the UPCA, the Court will only have exclusive jurisdiction over European patents after
the end of the transitional period. Before then, claimants, be they proprietors of European
patents bringing infringement actions or putative defendants to such prospective infringement
actions bringing pre-emptive actions for revocation or a DNI, will have the choice of bringing
their actions either before the Court or before the relevant national courts.
1
2
3
In the context of this chapter, where the term “European patent” is used, the same statements could also be made for SPCs
issued for products protected by European patents.
See chapter 6 (Jurisdiction, Competence and Forum Shopping) paragraph 6-05.
art.83(1) UPCA. The Administrative Committee can extend this period of seven years by a further period of seven years
following a consultation with the users of the patent system and an opinion from the Court (see art.83(5) UPCA).
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 125
