Where should an action be brought?

Infringement actions

An infringement action may be filed at the local or regional division:

• where an actual or threatened infringement has occurred or may occur
• where the defendant (or one of several defendants) has its residence or place of business 
   

If the participating Member State does not host a local division or does not participate in a regional division, infringement actions must be brought before the central division. 

An infringement action pending before a regional division must be referred to the central division upon the defendant's request if the alleged infringement occurred in the territories of three or more regional divisions. 

In case an infringement action is pending before a division of the Court of First Instance, another infringement action between the same parties relating to the same patent may not be brought before any other division. 

Counterclaims for revocation

A counterclaim for revocation may be brought by the defendant in an infringement action. If the defendant has brought such a counterclaim in a pending infringement action, the local or regional division concerned may - after having heard the parties - at its discretion: 

• proceed with both the infringement action and the counterclaim for revocation
• refer the counterclaim for revocation to the central division and suspend or proceed with the infringement action 
• refer the whole case (both the counterclaim for revocation and the infringement action) to the central division, provided that the parties agree thereto 

Invalidity actions and actions for declaration of non-infringement

An invalidity action or an action for declaration of non-infringement must be brought before the central division. However, if an infringement action between the same parties relating to the same patent has already been brought before a local or regional division, a later invalidity action or action for declaration of non-infringement may only be brought before the same local or regional division. 

Forum Shopping

In many cases, a patent infringement or the threat of a patent infringement will arise in more than one place. In such situations, the patent proprietor is free to choose at which local or regional division an infringement action should be brought ("forum shopping"). Although the UPC operates as one unit, local and regional divisions may potentially be influenced by different legal traditions which could affect the interpretation of the UPC rulebook and the general procedural approach at the specific regional or local division. 

For instance, with time, some divisions of the Court of First Instance may be viewed as more experienced or patentee-friendly than others, which could make patentees consider bringing infringement actions before these divisions. Furthermore, the jurisdiction rules make it possible for a patentee to instigate infringement proceedings before a local or regional division, even if an invalidity action between the same parties relating to the same patent is pending before the central division. Actions for declaration of non-infringement pending before the central division must be stayed if the patentee brings an infringement action between the same parties based on the same patent before a local or regional division within three months from the date on which the action for declaration of non-infringement was initiated. 

Other considerations, such as the language regime and the geographical location of particular divisions, may also influence the patentee's choice of forum.  

Thus, the UPC system provides a patentee with several options to choose the most favourable venue to enforce his patent against (alleged) infringers. This applies even in cases where the infringer has first instigated proceedings against the patentee. 

 

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Our team of experts

Do you have any questions on this topic? Don't hesitate to contact Partner Nicolai Lindgreen, Partner Nicolaj Bording, Attorney Emil Petri, Attorney Mathias Rønø Bove or Assistant Attorney Victor Fasmer Henum.