What happens in the UPC in the event of a counterclaim for revocation?

The Local or Regional Division hearing the infringement action will have the discretion to (1) proceed with the infringement and revocation proceedings together, (2) proceed with the infringement proceedings but send the revocation counterclaim to the Central Division (this is the practice of “bifurcation”) or (3) pause or “stay” the infringement proceedings (pending the resolution of the revocation proceedings) and send the revocation counterclaim to the Central Division. In addition, if the parties agree, the infringement action and revocation counterclaim can both be sent to the Central Division.

The ability to “bifurcate” is potentially heavily pro-patentee, if it leads to infringement actions of (possibly weak) patents being tried before validity is determined. It may also prejudice the stated aim of using a single court to determine infringement and validity to reduce costs. The Court may exercise its discretion over bifurcation, so it is unlikely to be in the parties’ control. However, the following provisions in the procedural rules are important and may “soften” the impact of this, in the interests of fairness between the parties to litigation:

  • The UPC will have only a discretion to bifurcate, not an obligation to do so (unlike the present system in Germany, where validity and infringe¬ment proceedings must be brought in separate courts).
  • Cases will typically proceed for many months (until the close of detailed written “pleadings”) before any bifurcation will be considered;
  • The infringement court must also stay its own (infringement) proceedings if there is a “high likelihood” of revocation, either at the point it de¬cides that validity should be determined by the Central Division, or when issuing its judgment on the infringement claim.

Anecdotally, it appears likely that most, if not all, Local and Regional Divisions will be happy to hear revocation counterclaims and are unlikely to bifurcate proceedings.

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