A guide to the UPC and the UP - Flipbook - Page 86
The Court as a “Court of a Member State”
6-05
Art.71a Brussels I Regulation (recast) provides that the Court, as a court common to the
Contracting Member States, is deemed to be a “court of a Member State” when exercising
jurisdiction in matters falling within the scope of the Brussels I Regulation (recast) and is part
of their judicial system. 6 Subject to the transitional regime, 7 the Contracting Member States
have therefore transferred jurisdiction to the Court and the Court replaces the national
courts for matters governed by the UPCA.
Competencies of the Court and National Courts
6-06
The seventh recital to the UPCA states that the Court has “exclusive competence in
respect of European patents with unitary effect and European patents granted under
the provisions of the EPC”. Art.3 UPCA expands on this, stating that the UPCA applies to
any Unitary patent, 8 and, without prejudice to art.83 UPCA, it applies to any European
patent not lapsed at the date of entry into force of the UPCA or any European patent
granted after that date 9 and any European patent application pending at the date of
its entry into force or which is filed after that date. 10 The UPCA also applies to any SPC
issued for a product protected by a “patent”. 11
6-07
However, the Court does not have exclusive competence in relation to all actions relating
to these rights. An exhaustive list of the actions for which it does have competence is set out
in art.32(1) UPCA and reproduced below. If an action is not included in this list, the national
courts remain competent to hear the matter. 12
(a) Actions for actual or threatened infringements of patents and SPCs and related defences,
including counterclaims concerning licences;
(b) Actions for DNIs, both relating to patents and SPCs;
(c)
Actions for provisional and protective measures and injunctions;
(d) Actions for revocation 13 of patents and for declarations of invalidity of SPCs;
(e) Counterclaims for revocation of patents and for declarations of invalidity of SPCs;
(f)
Actions for damages or compensation derived from the provisional protection
conferred by a published European patent application;
(g) Actions relating to the use of the invention prior to the granting of the patent
or to the right based on prior use of the invention;
(h) Actions for compensation for licences on the basis of art.8 Unitary Patent Regulation
relating to licences of right; and
6
7
8
9
10
11
12
13
arts 71a(1) and 71a(2)(a) Brussels I Regulation (recast) and art.1 UPCA.
Set out in art.83 UPCA and the subject of chapter 8 (The Transitional Provisions (Including Opt-outs and Opt-ins)).
This chapter 6 assumes that European patents have not been opted out unless otherwise mentioned.
art.3(a) UPCA.
art.3(c) UPCA.
art.3(d) UPCA.
art.3(b) UPCA. When the UPCA refers to a “patent”, it is referring to a European patent and/or a Unitary patent (art.2(g) UPCA).
art.32(2) UPCA.
The Court has exclusive competence over the issue of revocation in Contracting Member States not only under art.32(1)
UPCA but also under the Brussels I Regulation (recast) since the Court succeeds to the exclusive jurisdiction of the
Contracting Member States under art.24(4).
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 76
