Proceeding Decision

1. The Unified Patent Court has jurisdiction over acts of infringement committed before the entry into force of the Agreement on a Unified Patent Court on 1 June 2023. This is in line with Article 3(c) and 32(1)(a) UPCA, in the absence of any conflicting intertemporal provisions. 2. The claimant's choice among the potentially competent German local divisions will ultimately determine the competence of the chosen German local division. 3. In accordance with Article 32(3b) of the UPCA, a referral of the counterclaim for revocation to the central division and a continuation of the action for infringement may be made following a decision to this effect. Once the central division has delivered its ruling and upheld the patent in an amended form, a stay of the action for infringement may be based exclusively on R. 295(c)(i) or (m) RoP. 4. In both instances, the court is at liberty to exercise its discretion as to or not to grant a stay, respectively. In the context of a prior bifurcation decision where the patent had been upheld, the possibility of a stay is limited to instances where there are attenuating circumstances. This is because the agreement explicitly stipulates the possibility for a local or regional division to bifurcate and to stay or not to stay the action for infringement. Consequently, a decision on the infringement action is possible prior to the central division's resolution of the counterclaim referred to it. Subsequent to a decision by the central division on the referred counterclaim, the local or regional division is required to proceed with the next case management step which regularly is a decision on the action for infringement. There are only a few instances in which one might deviate from this default next case management step. These instances occur when the aggrieved party can demonstrate that the decision made by the central division is manifestly and prima facie erroneous in a formal and/or material way. 5. Art. 34 UPCA stipulates that injunctive relief, and other corrective measures can be ordered with respect to all contracting member states where the European Patent has effect and for which a decision of the Court has been requested as long as an infringing act or the danger of first infringement has been proven for at least one contracting member state. 6. In regard of procedures for implementing corrective measures, Article 64(4) of the UPCA explicitly mentions the interests of third parties. While the Agreement on a Unified Patent Court and the Rules of Procedure for the Unified Patent Court do not explicitly mention the interests of third parties or the public otherwise, these interests may be considered when exercising the discretion stipulated by the "may" in Articles 64(4), A. 63(1) and 64(1) UPCA, respectively. 7. In considering the interests of third parties and the public interest, the court will give due consideration to the possibility of the infringer entering into a license agreement or initiating proceedings for a mandatory license. If proceedings for the issuance of a mandatory license have been initiated, the court shall duly consider the outcome thereof. 8. Although a defendant might be regarded as an unwilling licensee, the Court may nevertheless find that the public interest must be considered as members of the public regularly have no possibility to influence the defendant`s behaviour and still might face serious consequences if access to the attacked embodiment was denied. 9. Those public needs can be adequately addressed through a mechanism which enables individual members of the public to request a single-use licence.

Jurisdiction on infringing acts before 1 June 2023, public interest, jurisdiction of the German local divisions, third parties` interests, mechanism to address public needs, Art. 34 UPCA, decision on infringement after bifurcation, no stay according to R. 295(c)(i) or (m) RoP