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

 

Court of Appeal

 

IPPT20240226, UPC CoA, Nanostring v 10x Genomics II

Munich Local Division had jurisdiction for provisional measures because attacked embodiments had been offered in Germany (Article 33(1)(a) UPCA)

 

Court of First Instance

 

IPPT20240502, UPC CFI, CD Paris, Nokia v Mala Technologies
Preliminary objection against jurisdiction of the UPC because of ‘lis pendens’ with German revocation action rejected (Rule 19.1(a) RoP, Article 71c Brussels I, Article 83 UPCA). Lis pendens rules of Article 71c(2) Brussels I Reg recast do not apply  to a case in which the lawsuit before the national German court was brought two years before the beginning of the transitional period. No stay of UPC revocation action possible because of pending German revocation proceedings. Article 30 (1) Brussels I Reg recast is not applicable and in accordance with Art. 33 (10) UPCA and Rule 295 RoP, the UPC may only stay its proceedings in cases involving EPO opposition proceedings when a swift decision is anticipated from the EPO. No time extension for lodging Statement of defence to revocation because of preliminary objection (Rule 49.1 RoP, Rule 9.3 RoP). 

 

IPPT20240425, UPC CFI, CD Paris, Toyota v Neo Wireless
Request to stay the proceedings rejected (Rule 295 RoP). Neither the fact that a Preliminary Objection has been lodged nor the likelihood of success of the appeal against the rejection of the Preliminary Objection are relevant factors for deciding whether the proceedings should be stayed. No rapid decision is expected from the EPO (Article 33(10) UPCA, Rule 295(a) RoP). In the current case, the date for the EPO opposition hearings has not even been set and is still unclear when the EPO will issue a decision. Claimant’s interest to continue the proceedings outweighs Defendant’s interest to stay the proceedings: (a) Defendant’s interest to (potentially) save litigation costs does not weigh up to the legitimate interest of Claimant in pursuing this revocation action; (b) The balancing of interests also strikes in favour of plaintiff because the patent expires on 27 January 2025; (c) The fact that there is a danger of differing results between the UPCA proceedings and in the EPO proceedings does not lead to a different result.

 

IPPT20240411, UPC CFI, LD Paris, ARM v ICPillar
Preliminary objections concerning competence of the Paris Local Division dismissed (Rule 19(1)(b) RoP, Article 33(1)(b) UPCA). The Claimant has demonstrated that one of the defendants is domiciled in France, that all the defendants have a commercial relationship and that the action relates to the same alleged infringement. The internal jurisdiction of the Paris Local Division under Article 33(1)(b) UPCA is justified. If in a case of multiple defendants one of the defendants has its residence within the territory of the local division seized, article 33(1)(b) UPCA applies regardless of whether the other defendants are based inside or outside the CMS or inside or outside the EU. Hence the only requirements to be met are: 1) the multiple defendants have a commercial relationship and 2) the action relates to the same alleged infringement. The requirement of a commercial relationship implies a “certain quality and intensity”. However, to avoid multiple actions regarding the same infringement and the risk of irreconcilable decisions from such separate proceedings, and to comply with the main principle of efficiency within the UPC, the interpretation of the link between the defendants should not be too narrow. The fact of belonging to the same group (of legal entities) and having related commercial activities aimed at the same purpose (such as R&D, manufacturing, sale and distribution of the same products) is sufficient to be considered as “a commercial relationship” within the meaning of the Article 33(1)(b)

 

IPPT20240403, UPC CFI, LD München, Avago v Tesla
The infringement claim and the two counterclaims for revocation will be heard together before the Munich Local Division (Article 33(3) UPCA, Rule 37 RoP). Both parties have argued that the action and the counterclaims should be heard together before the same court. The defendants have also agreed that everything should be referred to the central chamber. The plaintiff has not agreed to this, so that this option has been ruled out.

 

IPPT20240222, UPC CFI, LD Mannheim, MED-EL v Advanced Bionics
Request for joint hearing of revocation and infringement actions rejected (Rule 340 RoP, article 33 UPCA). Inadmissible because it conflicts with jurisdictional regime of article 33(1) and (4) UPCA. Even if the plaintiff had been granted a right to choose between the local and the central division when bringing the infringement action pursuant to Art. 33(5), first sentence, UPCA, the exercise of this right to choose in favour of the local division may not be subsequently overridden by a joinder pursuant to R. 340.1

 

IPPT20240215, UPC CFI, LD The Hague, Plant-e v Arkyne
No bifurcation. Panel decides to hear both the infringement action and the counterclaim for revocation (Art. 33(3)(a) UPCA).Such a joint hearing of the infringement action and the counterclaim seems to be appropriate in particular for reasons of procedural expediency and avoids the risk of delay that might be involved with bifurcating. It is also preferable because it allows both issues – validity and infringement – to be decided on the basis of a uniform interpretation of the patent by the same panel composed of the same judges.

 

IPPT20240202, UPC CFI, LD Munich, Amgen v Renegeron
Bifurcation by unanimous request (Rule 37 RoP). Unanimous requests by all parties directed to a Local or Regional Division to refer a counterclaim for revocation to the Central Division for decision will be granted unless strong counterarguments require a different decision. Provisional decision to proceed with the infringement proceedings (article 33(3) UPCA). In the exercise of its discretion, the Panel decides to proceed with the infringement proceeding, but reserves the right to consider the possibility of suspending the infringement proceeding pursuant to Art. 33.3.c UPCA or to suspend the proceedings for any other reason put forward by the Defendants. […]. If defendants 1-3 had wished to have the Local Division Munich decide exclusively on the validity arguments, they could have filed counterclaims for revocation pursuant to Rule 75 of the Rules of Procedure together with their Statement of Defence, in addition to the independent revocation actions already filed. If they had done so, the Local Division Munich would have been able to decide on all four counterclaims. The Central Division would have been obliged to stay the proceedings on the individual revocation actions pursuant to Rule 75(3) of the Rules of Procedure. 

 

IPPT20240108, UPC CFI, CD Paris, Carrier v BITZER Electronics
Rejected stay of revocation proceeding pending opposition proceedings before EPO (Rule 295(1)(a) RoP, Article 33 (10) UPCA). Requirement of “rapid decision” not fulfilled in the absence of a concrete expectation for a EPO decision in the near future evaluated together with the expected date of the current proceedings, that can be estimated in approximately one year since the lodging of the claim.

 

IPPT20231220, UPC CFI, LD Munich, SES-Imagotag v Hanshow
The Munich Local Division has competence in respect of a request for provisional measures based on alleged infringement of the patent, inter alia, in Germany (article 33(1)(a) UPCA). 

 

IPPT20231219, UPC CFI, LD Düsseldorf, Nutricia v Nestlé
No bifurcation. Procedural order to hear both the infringement action and the counterclaim for revocation   (Article 33(3)(a) UPCA; Rule 37 RoP). Appropriate in particular for reasons of efficiency and preferable because it allows both issues – validity and infringement – to be decided on the basis of a uniform interpretation of the patent by the same panel composed of the same judges. Although validity and infringement issues in the chemical/pharmaceutical field can be demanding, the panel is composed of judges who are very experienced in patent law and familiar with difficult issues in this context. The assignment of the TQJ, who is experienced in the technical field in question, ensures that the Local Division is undoubtedly capable of deciding both matters.

 

IPPT20231201, UPC CFI, LD Düsseldorf, Kaldewei v Bette

No bifurcation. The local division proceeds with both the action for infringement and with the counterclaim for revocation (article 33(3)(a) UPCA, Rule 37 RoP). Such a joint hearing of the infringement action and the counterclaim for a declaration of invalidity appears to make sense for reasons of efficiency alone. It is also advantageous in terms of content, as it allows a decision to be made on both the legal status and the question of infringement on the basis of a uniform interpretation by the same panel of judges in the same composition. Such a uniform approach is all the more justified if the complexity of the technology in dispute - as here - is rather moderate in the known spectrum of patent disputes and the number of attacks on the legal validity is also manageable.

 

IPPT20231122, UPC CFI, LD Düsseldorf, myStromer v Revolt Zycling

No bifurcation. Order before the conclusion of the written procedure to hear both the infringement action and the counterclaim for a declaration of invalidity and to request the President of the Court of First Instance to assign a technically qualified judge (article 33(3)(a) UPCA, Rule 37 RoP). The joint hearing of infringement and revocation counterclaims can be useful for reasons of efficiency alone. It is also advantageous in terms of content, as it allows a decision to be made on both the legal status and the question of infringement on the basis of a uniform interpretation by the same panel in the same composition. This applies all the more if the complexity of the technology in dispute is rather moderate in the known spectrum of patent disputes and the number of validity attacks is also manageable.

 

IPPT20231120, UPC CFI, CD Munich, Astellas v Healios

Revocation action currently not stayed because of rapid decision expected from the EPO, but continued at least until the interim conference which is to be held on 14 March 2024 (article 33(10) UPCARule 295(a) RoP)). The Court finds that the Claimant has credibly established that it has a legitimate interest in pursuing this revocation action with the aim of obtaining (at least some degree of) commercial certainty in view of the Patent. Rapid decision expected from the EPO requires that there should be a concrete expectation (i.e. a known date in time) for a decision which date should be in the near future such that it is clearly expected to be delivered before an expected decision by the UPC. Decision not limited to final decisions of the EPO.

 

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

 

IPPT20230929, UPC CFI, LD Munich, Edwards Lifesciences v Meril

Same alleged infringement and permanent business relationship.(Article 33(1)(b) UPCA). In the context of Art. 33.1(b) UPCA, the question is then whether the matter relates to the same alleged infringement (…) This is because the latter is in a permanent business relationship with Defendant 1) with regard to the infringing objects and the same alleged infringement is involved, namely the infringement of the patent at issue. Defendant 1) is a wholly-owned subsidiary of Defendant 2). Defendant 1) acts as the "European Headquarters" of the group of companies and is supplied by Defendant 2) with the contested embodiments

 

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.