Since its launch on June 1, 2023, the Unified Patent Court (UPC) has brought about a change in the resolution of patent disputes in Europe. Two years after it began operations, the European judicial system for industrial property has undergone a significant transformation that continues to raise questions about its territorial scope and practical implications.
One of the issues that has generated the most interest is the potential impact of TUP decisions on countries that are not part of the EU system, such as Spain.
What is the Unified Patent Court?
The Unified Patent Court (UPC) is a specialized judicial body with jurisdiction over cases concerning the validity and infringement of European patents. It operates in all European Union countries that have signed and ratified the Agreement on the Establishment of the Unified Patent Court (UPCA), within the framework ofthe Treaty on Enhanced Cooperation(a mechanism provided for under Community law).
The implementation of the UPC has gone hand in hand with the creation of a new type of industrial property right: the European Patent with unitary effect, or Unitary Patent. Once granted by the European Patent Office (EPO), this patent has automatic legal effect in all countries participating in the unitary system, without the need for subsequent national validation.
Differences Between the Unitary Patent and the Traditional European Patent
A conventional European patent must be validated on a country-by-country basis after it is granted in order to become a national patent in each of the territories that are signatories to the European Patent Convention (EPC) and, thus, take effect in the territories where protection is sought.
With the Unitary Patent, on the other hand, patent holders can opt for a single title providing simultaneous territorial coverage in the member states that have ratified the UPC Agreement, which simplifies the administrative and legal costs of maintaining and protecting the patent.
Jurisdiction of the TUP: To Which Cases Does It Apply?
The UPC has jurisdiction, in the territories that have ratified the Treaty for its protection, over both unitary patents and traditional European patents, unless the latter have been expressly excluded through the opt-out mechanism (this exclusion must be requested voluntarily before the UPC).
It should be noted that the TUP is not a court that forms part of the official institutions of the European Union. It is a national court, with the distinctive feature that it has concurrent jurisdiction in all countries that have ratified the relevant treaty.
However, like any other court in EU countries, it is subject to the authority of the Court of Justice of the European Union (CJEU), particularly with regard to matters involving the interpretation of European law.
Spain is not immune to the effects of the TUP
Spain did not accede to the Treaty on Enhanced Cooperation, nor has it signed the treaty establishing the Unified Patent Court. Consequently, European patents validated in Spain are, in principle, governed by the traditional system, and cases concerning their validity or infringement fall under the jurisdiction of the Spanish courts.
However, this does not mean that the TUP’s decisions cannot have effects in Spain. Like any national court in the EU,the TUP also has the authority to issue judgments and initiate proceedings whose effects extend beyond the borders of the countries that are parties to the TUP Treaty. This is due to Regulation (EU) No. 1215/2012 (known as the Brussels I Regulation) on the mutual recognition, within the EU, of judgments issued by the courts of any EU member state.
Practical example: interim measures with effect in Spain
Let’s imagine that Company A holds a European patent that has been validated both in Spain and in several European countries that are part of the UPC system. Meanwhile, Company B, headquartered in one of the countries participating in the UPC system, markets a product both in those countries and in Spain.
Company A believes that such marketing could infringe its patent in all of those countries, including Spain. Therefore, it decides to file an infringement lawsuit with the TUP, requesting preliminary injunctions to halt Company B’s marketing of Product X.
If the TUP grants injunctive relief in favor of Company A, that ruling could also be enforced in Spain. This would lead the Spanish courts to enforce the corresponding injunctive relief order in Spain, without prejudice to the fact that the decision on the merits of the case (whether or not an infringement occurred on Spanish territory) falls exclusively within the jurisdiction of the Spanish courts.
It should be emphasized that, even though Spain is not a party to the Treaty on Enhanced Cooperation and has not signed the Treaty establishing the Unified Patent Court (UPCA), the decisions of the Unified Patent Court undoubtedly have the potential to produce effects in Spain as well.
At ELZABURU, we continue to closely monitor developments in the TUP system and its implications in Spain, so that we can provide our clients with legal advice that is in line with European legal standards.
Bosco de la Vega, Associate in the Patent Practice Group at Elzaburu.