The effect of an opt out under article 83 of the agreement on a Unified Patent Court on jurisdiction for decisions on the merits and preliminary injunctions

28 August 2013

Wouter Pors

The Unified Patent Court and the issue of Article 83

Since the Regulation (EU) No 1257/2012 of the European Parliament and of the Council of 17 December 2012, implementing enhanced cooperation in the area of the creation of unitary patent protection (Unitary Patent Regulation) and the Council Regulation (EU) No 1260/2012 of 17 December 2012, implementing enhanced cooperation in the area of the crea-tion of unitary patent protection with regard to the applicable translation arrangements (Regulation on Translation Arrangements) have been adopted in December 2012 and follow-ing that the Agreement on a Unified Patent Court (UPC Agreement) was signed on 19 Febru-ary 2013, the creation of a Unitary Patent and of a Unified Patent Court to enforce it seem to be making steady progress towards implementation, which is expected early 2015. As of then, Unitary Patents, with effect in all Member States participating in the enhanced cooperation can be obtained and the first action can then be launched in the Unified Patent Court.

It is clear that the Unified Patent Court will have exclusive jurisdiction for the infringement and validity of Unitary Patents right from the start, without any exception. In addition to that, the Court is also intended to have exclusive jurisdiction for traditional European pa-tents, which will remain a permanent alternative for the Unitary Patent. However, giving un-conditional exclusive jurisdiction for those patents to a court that does not exist yet and that will apply rules that are not yet completely known was one step too far. Therefore, the UPC Agreement contains a transitional regime which will initially apply for a period of at least 7 years, but may even be prolonged.

According to Article 32 UPC Agreement (UPCA), the Unified Patent Court will inter alia have exclusive competence for actions for actual or threatened infringements of patents and sup-plementary protection certificates and related defences, including counterclaims concerning licences, actions for declarations of non-infringement of patents and supplementary protec-tion certificates, actions for provisional and protective measures and injunctions and for ac-tions and counterclaims for revocation of patents and for declaration of invalidity of supple-mentary protection certificates, both for Unitary Patents and for traditional European pa-tents, the latter of course only with regard to countries participating in the UPC Agreement.

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Wouter Pors


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