When the new European Unified Patent Court (UPC) is established, it will – for those countries that have ratified the UPC Agreement – have jurisdiction not only over new European unitary patents, but also over European patents granted by the EPO for which no unitary effect has been registered. However, during a transitional period (initially seven years) it is possible for owners of such non-unitary European patents to opt out from this regime (Article 83 UPC Agreement).
This means that the UPC will have no jurisdiction, and that the national court(s) will still be the only competent court(s) to decide on infringement and validity of these patents. This raises the question under which law the national courts should judge these opted-out European patents: would it still be the national law, or would the UPC agreement, in particular with regard to the substantive patent law, remain applicable?
In an interpretative note published on its website on January 29 2014, the Preparatory Committee concluded that if (an application for) a European patent is opted out (or if during the transitional period the case is brought before a national court), the UPC Agreement no longer applies. As a consequence, the competent national court has to apply the applicable national law.
This interpretative note has caused some uproar in interested circles. Of course, there will be many differences with relation to the judicial procedures that govern the court case. However, especially problematic is the situation where infringement stretches across country borders, for example in the case of indirect infringement or joint infringement. The application of national law may then yield results that a decision following the provisions of the UPC Agreement would not have led to. This, in turn, creates a great opportunity for forum shopping. Of course, such a situation would run counter to the very goal of the UPC, that is a strong harmonisation of the administration of justice with respect to European patents.
A possible solution would be to amend the national patent laws so that if a national court is competent to decide on a European patent (application) during the transitional period, this national court is obliged to decide according to the substantive patent law provisions of the UPC Agreement. In some countries it is being discussed whether such an amendment would be desirable.
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