A guide to the UPC and the UP - Flipbook - Page 149
9-01
Art.32(1)(d) and (e) UPCA provides that the Court has exclusive competence for the
following actions: (i) revocation of patents; (ii) declarations of invalidity of SPCs; (iii)
counterclaims for revocation of patents; and (iv) counterclaims for declarations of invalidity
of SPCs, patents meaning both Unitary patents and European patents subject to the
Court’s jurisdiction.
9-02
Art.24 UPCA provides that the sources of applicable law are EU law, the UPCA, the EPC,
other relevant international agreements and national law. The principal source of law
concerning the validity of a patent before the Court is therefore the EPC as the UPCA contains
no other provisions relating to substantive validity issues and the CJEU has (at least to date)
only had extremely limited jurisdiction over issues concerning the validity of European patents,
as opposed to SPCs, which are discussed in chapter 4. Indeed, the only aspect of patent validity
which has been harmonised at an EU level and thus as to which the CJEU clearly has
jurisdiction is that concerning biotechnological inventions by virtue of Directive 98/44/EC. 1
9-03
The consequences of this approach and the extent to which the Court will defer to the decisions
of the TBA (and EBA) and/or those of the national courts when considering substantive issues
relating to the validity remain to be seen. It certainly seems likely that at least early on the Court
will have regard to the EPO White Book when presented with a dispute concerning such issues.
The role of the EPC, the case law of the EPO and the relationship between the TBA, the CJEU
and the Court is addressed in chapter 7 (Applicable Law), paragraphs 7-48 to 7-53.
Pending decisions from the Court on disputed substantive validity issues presented to it,
therefore, there is little more to be said on the subject of the substantive law on validity.
9-04
The procedure regarding the amendment of patents before the Court is dealt with in chapter 12
(Written Procedure) paragraphs 12-75 to 12-91 and the stay of proceedings before the Court
pending the outcome of an opposition is dealt with in chapter 11 (Overview of Procedure and
General Procedural Provisions) paragraphs 11-166 to 11-168.
1
Directive 98/44/EC of 6 July 1998 on the legal protection of biotechnological inventions (OJ L 213, 30.7.1998, p. 13-21).
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 139
