Interplay between the Divisions
The competence and interplay between actions in the Local/Regional Divisions and the Central Division is set out in the UPC Agreement. The Agreement gives a large degree of ﬂexibility to the Courts and parties to hear counterclaims together, bifurcate and/or stay proceedings. If the parties are in agreement, then they can agree on an appropriate Court for most actions.
For stand-alone actions, the Central Division has jurisdiction over revocation actions and declarations of non-infringement (both allocated to the appropriate section), while the Local/Regional divisions have jurisdiction over infringement and provisional and protective measures including injunctions.
For infringement actions, the patentee or exclusive licensee can choose to launch proceedings in the relevant Local/Regional Division (a) where the actual or threatened infringement has occurred; (b) where the defendant (or one of the defendants) has its residence or principal place of business or if neither is applicable, its place of business. If a defendant has no residence or place of business within the UPC Member States, then the action can be brought in the place where the actual or threatened infringement has occurred or the Central Division. If that Member State does not have a Local Division or is not part of a Regional Division, then the action must be brought before the Central Division. Once an action has been brought in one Local/Regional Division that Court is seized of the action and unless transferred, is inadmissible in other Divisions. In the case of multiple defendants, in order to bring a single action, the alleged infringement must be the same and the defendants must have a commercial relationship.
If a defendant to an infringement action raises a counterclaim for revocation then the Local/Regional Court must decide how to proceed. The panel can (i) choose to hear the action for infringement together with the counterclaim for revocation; (ii) refer the counterclaim for revocation to the Central Division and then either stay or continue with the action for infringement; or (iii) with the agreement of the parties, refer the entire action to the Central Division for a decision.
If a revocation action is started by a party before the Central Division, then the patentee can choose whether to counterclaim for infringement before the Central Division, or to bring infringement proceedings before an appropriate Local/Regional Division (using the same criteria discussed above).
Any declaration of non-infringement (DNI), which must be brought before the Central Division, will be stayed if the patentee brings an action for infringement before an appropriate Local/Regional Division within 3 months of the DNI action being initiated.
Parties are also required to notify the Court of any pending revocation, limitation or opposition proceedings before the EPO, including whether there has been a request for accelerated proceedings. If a rapid decision is expected from the EPO, then the Court may stay proceedings.