SONN Patentanwälte – IP Attorneys

UPC decision: Competence Central Division vs Local Division

Article 33.4 Agreement on a Unified Patent Court: The requesting party and defendant in the main proceedings is requesting at the central division that the revocation action be rejected as inadmissible, since the requesting party has brought an infringement action to the Munich local division. Both a statement of infringement (at the local division in Munich) as well as a statement of revocation (at the registry in Luxemburg) were lodged in hard-copy on June 1, 2023 (since the Case Management System CMS had ceased to function on that day); the statement of revocation was lodged at 11.26 in the morning; the statement of claim in the infringement action was lodged at 11.45 in the morning. 

The central division found that the revocation action was brought before the infringement action was brought and therefore considers itself competent in respect of the revocation action on the basis of Article 33.4 Agreement on a Unified Patent Court (UPCA). The drafting of Article 33.4 UPCA also presupposes a clear answer to this question of chronology: either the revocation action was brought first in which case the main rule applies, i.e. the central division is competent, or at the time of bringing the revocation action, an infringement action has been brought in a local or regional division, shifting the competence exclusively to that local or regional division. 

The way to unequivocally and objectively determine which action has been brought first in time is by establishing and comparing the exact date and time of lodging of the statements. The registry in Luxemburg is the registry of the Unified Patent Court and therefore serves also as the registry of the central division in Munich and also functions as „receiving mailbox“ for the entire Unified Patent Court. The statement of revocation in this case was lodged at the right place according to Rule 4.2 Rules of Procedure, i.e. at the registry in Luxembourg. Therefore, the revocation action was brought first. Consequently, the request is rejected and the central division in Munich is competent. (UPC August 24, 2023, CFI 1/2023).