Article 33

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Competence of the divisions of the Court of First Instance

1.   Without prejudice to paragraph 7 of this Article, actions referred to in Article 32(1)(a), (c), (f) and (g) shall be brought before:

(a) the local division hosted by the Contracting Member State where the actual or threatened infringement has occurred or may occur, or the regional division in which that Contracting Member State participates; or

(b) the local division hosted by the Contracting Member State where the defendant or, in the case of multiple defendants, one of the defendants has its residence, or principal place of business, or in the absence of residence or principal place of business, its place of business, or the regional division in which that Contracting Member State participates. An action may be brought against multiple defendants only where the defendants have a commercial relationship and where the action relates to the same alleged infringement.

Actions referred to in Article 32(1)(h) shall be brought before the local or regional division in accordance with point (b) of the first subparagraph.

Actions against defendants having their residence, or principal place of business or, in the absence of residence or principal place of business, their place of business, outside the territory of the Contracting Member States shall be brought before the local or regional division in accordance with point (a) of the first subparagraph or before the central division.

If the Contracting Member State concerned does not host a local division and does not participate in a regional division, actions shall be brought before the central division.

2.   If an action referred to in Article 32(1)(a), (c), (f), (g) or (h) is pending before a division of the Court of First Instance, any action referred to in Article 32(1)(a), (c), (f), (g) or (h) between the same parties on the same patent may not be brought before any other division.

If an action referred to in Article 32(1)(a) is pending before a regional division and the infringement has occurred in the territories of three or more regional divisions, the regional division concerned shall, at the request of the defendant, refer the case to the central division.

In case an action between the same parties on the same patent is brought before several different divisions, the division first seized shall be competent for the whole case and any division seized later shall declare the action inadmissible in accordance with the Rules of Procedure.

3.   A counterclaim for revocation as referred to in Article 32(1)(e) may be brought in the case of an action for infringement as referred to in Article 32(1)(a). The local or regional division concerned shall, after having heard the parties, have the discretion either to:

(a) proceed with both the action for infringement and with the counterclaim for revocation and request the President of the Court of First Instance to allocate from the Pool of Judges in accordance with Article 18(3) a technically qualified judge with qualifications and experience in the field of technology concerned.

(b) refer the counterclaim for revocation for decision to the central division and suspend or proceed with the action for infringement; or

(c) with the agreement of the parties, refer the case for decision to the central division.

4.   Actions referred to in Article 32(1)(b) and (d) shall be brought before the central division. If, however, an action for infringement as referred to in Article 32(1)(a) between the same parties relating to the same patent has been brought before a local or a regional division, these actions may only be brought before the same local or regional division.

5.   If an action for revocation as referred to in Article 32(1)(d) is pending before the central division, an action for infringement as referred to in Article 32(1)(a) between the same parties relating to the same patent may be brought before any division in accordance with paragraph 1 of this Article or before the central division. The local or regional division concerned shall have the discretion to proceed in accordance with paragraph 3 of this Article.

6.   An action for declaration of non-infringement as referred to in Article 32(1)(b) pending before the central division shall be stayed once an infringement action as referred to in Article 32(1)(a) between the same parties or between the holder of an exclusive licence and the party requesting a declaration of non-infringement relating to the same patent is brought before a local or regional division within three months of the date on which the action was initiated before the central division.

7.   Parties may agree to bring actions referred to in Article 32(1)(a) to (h) before the division of their choice, including the central division.

8.   Actions referred to in Article 32(1)(d) and (e) can be brought without the applicant having to file notice of opposition with the European Patent Office.

9.   Actions referred to in Article 32(1)(i) shall be brought before the central division.

10.   A party shall inform the Court of any pending revocation, limitation or opposition proceedings before the European Patent Office, and of any request for accelerated processing before the European Patent Office. The Court may stay its proceedings when a rapid decision may be expected from the European Patent Office.

 

Case Law

 

IPPT20231113, UPC CFI, CD Paris, Meril Italy v Edwards Lifesciences

Preliminary objection concerning the competence of the Central Division because of a pending action before the Munich Local Division rejected: Meril Italia is not the same party a Meril India or Meril Germany (article 33(4)UPCA, Rule 20 RoP). The Unified Patent Court framework does not exclude that a patent may be attacked by different subjects, even if linked by organizational ties or commercial relationships, and by the means of different claims, even if structured in the same grounds of invalidity. No per se abuse. Italian law to determine whether Meril Italia is a different party from Meril India and/or Meril Germany. The primary role of the central division as the judge of the revocation actions is confirmed by the provision that allows the local or regional division before which a counterclaim for revocation has been brought in an infringement action to refer the counterclaim or, with the agreement of the parties, the whole case to the central division (Article 33 UPCA). Article 33 UPCA contains an autonomous set of rules that regulates the situations of parallel proceedings, and is not regulated by article 29 Brussels I-bis recast. No sufficient evidence that the Respondent is a straw company for Meril India. Risk that two divisions of the Court would decide on the same issue and that competitors would have two (or more) ‘shots’ at the same patent limited because local division discretionary power to refer the counterclaim for revocation for decision to the central division and suspend or proceed with the action for infringement or with the agreement of the parties (article 33(3) UPCA). Revocation action has no ‘blocking’ effect on infringement and no ‘bifurcation by default’ effect

 

IPPT20230824, UPC CFI, CD Munich, Sanofi-Aventis v Amgen

Preliminary objection against competence of Central Division in revocation action rejected because revocation action was already brought before the Central Division (article 33(4) UPCA). Statement of Revocation in revocation action was lodged in hard-copy on 1 June 2023 at 11.26, prior to the Statement of Claim in the infringement action at 11.45.