INTRODUCTION Contributed by: Gordon Harris and Vittorio Cerulli Irelli, Trevisan & Cuonzo
infringement action can be brought in the appro - priate seat of the Central Division. Alternatively, infringement actions can be brought before the Local or Regional Division where the actual or threatened infringement has occurred or may occur. Actions for revocation or declarations of non- infringement are to be brought in the appropri - ate seat of the Central Division. The correct seat of the Central division is decided on the basis of technology types. These are divided as fol - lows, using the International Patent Classifica - tion operated by the World Intellectual Property Organisation: • Milan – Class A – Human Necessities includ - ing pharmaceuticals; • Munich – Classes C and F – Chemistry, met - allurgy and mechanical engineering; and • Paris – Classes B, D, E, G and M – Physics and electronics plus all cases regarding Sup - plementary Protection Certificates. If a counterclaim to an infringement action con - tains a request for revocation, the presumption is that the case will remain in the Local Division where the infringement action was commenced. The court has discretion to transfer the case to a Central Division if that seems appropriate. So far, this option has been exercised in a very limited number of cases, mostly in situations where a parallel revocation action was pending before the Central Division. Actions regarding Standard Essential Patents (SEPs) can be brought in the UPC, which has reserved the right to set rates for Fair, Reason - able and Non-Discriminatory (FRAND) licence terms by way of a counterclaim to an infringe - ment action.
There are comprehensive provisions for the grant of preliminary relief. Jurisdiction – Enforcement of Judgments If the court finds the patent in suit valid and infringed, it may grant an injunction covering all the participating countries, if the patent in suit was designated in each of those countries. In the case of Unitary Patents, a full injunction will be automatic. Damages may also be recovered in relation to sales in all participating countries where the patent was designated. This covers an economic area of over 300 million consumers and a total GDP of almost EUR14 trillion. A recent decision of the CJEU (BSH v Electrolux) has indicated that the jurisdiction of the UPC may extend beyond the boundaries of the par - ticipating countries. The judgment confirms that the courts of a country where a patent is grant - ed have exclusive jurisdiction over questions of validity and registration but that the courts of the country where the defendant is domiciled have a general jurisdiction over the question of infringement in any country where the patent is granted. This includes the EU states not, or not yet, participating in the UPC, and third countries, like the UK and Turkey, where a European pat - ent can be designated in the EPC system, even though they are outside the European Union. This so-called long-arm jurisdiction has been applied several times already by Local Divisions of the UPC. Summary The UPC has now been running for more than two years and appears to have already made a significant impact. The number of actions com - menced (over 700), the quality of its judgments (generally considered to be strong) and the inter -
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