UPC-series: Bifurcation at the UPC

According to Article 32 UPCA the Court has competence over both infringement and revocation actions. In general, the UPC might prefer the non-bifurcated system, but there are some exceptions. Essentially, if an infringement case is pending before the Court, a counterclaim for revocation can also be raised for the same patent. As a result, the validity and the possibility of infringement are both examined by the same court and in the same proceedings. Certainly, this is not always the case, especially in case of a sole revocation action or when the infringement case is pending before the EPO or before a national court during the transitional period set out by the UPCA.

In the first case scenario, where an infringement case is pending and the revocation claim comes as a defense to the infringement claim by the patentee, the Local or Regional Division has the discretion to decide upon the infringement action and the counterclaim for revocation. This means that the Local or Regional Division still can refer the counterclaim of revocation to the Central Division according to Article 33 para.3 (b) UPCA and create a bifurcation situation after all.

In the second case scenario, where just a revocation action is filed, the latter needs to be lodged before the Central Division pursuant to Article 33 para.4 UPCA. Nonetheless, an infringement action while the revocation case is still pending, can be filed before any competent body of the Court of First Instance. For the re-unification of infringement and revocation, Article 49 para.2 lit.b RoP gives the opportunity to the defense to raise a counterclaim of infringement  and Article 75 RoP provides for rise of a counterclaim of revocation to the infringement claim before the Regional or Local Division. The question though remains, as it is not specified what happens with the revocation action filed before the Central Division.

In the third case scenario, where an opposition or an invalidity actionis pending before the EPO or a national court, bifurcation is the only way to move forward. The national invalidity proceedings block the invalidity proceedings before the UPC considering this national part of the European Patent.  Last but not least, bifurcation exists when the EPO opposition procedure co-exists with a revocation act before the UPC. While the two procedures run in parallel, the UPC has no choice but to stay the proceedings until the issuance of the decision by the EPO or the national Court (Rule 295  Ro P and Article 33 para.8, 10 UPCA).

Areas of Law

Set your categories menu in Header builder -> Mobile -> Mobile menu element -> Show/Hide -> Choose menu