http://ipkitten.blogspot.com/2025/01/upc-finds-that-it-has-jurisdiction-to.html
In this decision addressing the jurisdictional reach of the UPC jurisdiction to the UK post-Brexit, the Düsseldorf Local Division found that the UPC had jurisdiction over infringement of a UK patent right (UPC_CFI_355/2023). Following Brexit, the UK chose to withdraw itself from participation in the UPC. Naively, it might therefore be assumed that the UPC has no reach into the UK. However, European patents granted by the EPO may be validated within both UPC and non-UPC contracting states to the EPC, including the UK. According to the decision in UPC_CFI_355/2023, in certain circumstances, the UPC has jurisdiction over the UK with respect to infringement actions for such patents.
Case background
The case in UPC_CFI_355/2023 concerned European patent EP 3594009 B1, owned by Fujifilm. The patent was validated and in force in both Germany and the United Kingdom. Fujifilm brought an infringement action against three German Kodak entities, whilst the defendants filed a counterclaim for revocation. The defendants challenged the Local Division’s jurisdiction to hear claims concerning the UK part of the patent. In a whistle-stop tour through the relevant EU regulations, the decision considers which legal provisions from the UPCA and broader EU legislation dictate the jurisdictional reach of the UPC.
The Düsseldorf Local Division assessed whether the UPCA (Article 34 or Article 31, in conjunction with the Brussels Ibis Regulation (Regulation 1215/2012)) gave it jurisdiction to consider a case of infringement of a UK patent. The division determined that it did have jurisdiction. However, in the end, this didn’t impact the outcome of the case, in view of the court’s finding that the patent was invalid in German under the EPC and the lack of a revocation action in the UK
Article 34 UPCA does not limit the UPC’s jurisdiction to UPC contracting states
The defendants in the case argued that Article 34 UPCA limited the UPC’s jurisdiction to UPC Contracting Member States only. Article 34 UPCA states that “Decisions of the Court shall cover, in the case of a European patent, the territory of those Contracting Member States for which the European patent has effect”. The defendants contended that “pursuant to Art. 34 UPCA, Germany is the only Contracting Member State for which the patent in suit still has effect. The United Kingdom is not a Contracting Member State of the UPC. On this basis alone, it follows that the territorial scope of a decision of the UPC in this case cannot be extended to the United Kingdom.” (para. 14).
In response, the claimant argued that “Art. 34 UPCA complements Art. 3(2) of Regulation (EU) 1257/2012
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, which states that: “A European patent with unitary effect shall have a unitary character. It shall provide uniform protection and shall have equal effect in all the participating Member States”. The claimants argued that as “traditional” European patents do not have unitary effect, Article 34 UPCA is necessary to ensure that decisions of the Court also apply uniformly to these patents in all Contracting Member States (para. 15). However, the claimant argued, “Art. 34 UPCA is unconcerned with the international jurisdiction of the Court” and that jurisdiction is instead governed by Art. 31 UPCA and the Brussels Ibis Regulation (Regulation 1215/2012) (para. 15).
In its decision, the Local Division agreed with the claimant and explicitly rejected arguments based on Art. 34 UPCA that it did not have jurisdiction with respect to the UK. The Local Division specifically agreed with the claimant that “Art. 34 UPCA covers the territorial scope of the Court’s decision within the territory of the Contracting Member States, but does not exclude decisions having effect beyond the territory of the Contracting Member States” (page 23, emphasis added).
Article 24(4) Brussels Ibis Regulation (Regulation 1215/2012) does not give exclusive jurisdiction to the registration state of the patent
Article 4(1) Brussels I Regulation (Regulation 1215/2012) states that “persons domiciled in a Member State shall, whatever their nationality, be sued in the courts of that Member State”. However, Article 24 Brussels I Regulation (Regulation 1215/2012) states that: “The following courts of a Member State shall have exclusive jurisdiction, regardless of the domicile of the parties […] (4) in proceedings concerned with the registration or validity of patents […] irrespective of whether the issue is raised by way of an action or as a defence, the courts of the Member State in which the deposit or registration has been applied for”.
The defendants argued that Article 24(4) Brussels I Regulation (Regulation 1215/2012) gave exclusive jurisdiction over patent validity to the courts of the registration state (i.e. to the state in which the patent was validated). However, the Local Division rejected this argument. The Local Division, citing the ECJ’s decision in GAT v LUK, found that Article 24(4) Brussels I Regulation (Regulation 1215/2012) “does not apply to the question of which court has jurisdiction in infringement proceedings” (page 21).
Additionally, the Local Division noted that Article 24(4) Brussels I Regulation (Regulation 1215/2012) only applies between EU Member States. For non-EU countries like the UK, the exception in Article 24(4) to the general rule of defendant’s domicile jurisdiction (Article 4 Brussels I Regulation) does not apply per se. Therefore, since the UK is now a third country, Article 24(4) does not give exclusive jurisdiction to UK courts over the UK part of the European patent.
Article 31 UPCA and Article 4(1) Brussels I Regulation give the UPC jurisdiction in the UK
Having rejected the defendants’ arguments based on Article 24(4) Brussels I Regulation (Regulation 1215/2012) and Article 34 UPCA, the Local Division concluded that Article 31 UPCA and Article 4(1) Brussels I Regulation (Regulation 1215/2012) gave it jurisdiction in the UK in the case in question.
Article 31 UPCA states that: “The international jurisdiction of the Court shall be established in accordance with EU Regulation No. 1215/2012 or, where applicable, on the basis of the Convention on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (Lugano Convention)“. As discussed above, Article 4(1) Brussels I Regulation (Regulation 1215/2012) states that persons domiciled in a Member State shall, whatever their nationality, be sued in the courts of that Member State.
In the case in question, all the defendants were domiciled in a Member State (Germany). Article 4(1) Brussels Ibis (Regulation 1215/2012) states that persons domiciled in a Member State shall be sued in the courts of that Member State. Through Articles 71a-d Brussels Ibis, the UPC is deemed to be a court of a Member State for these purposes. Critically, the Local Division found this jurisdiction extends to infringement actions concerning non-EU states like the UK. The Local Division specifically cited the ECJ’s Owusu case (C-281/02), which found that Brussels jurisdiction rules apply even to “circumstances involving relations between the courts of a single Contracting State and those of a non-Contracting State” (page 22).
Thus, for the Local Division, Article 31 UPCA combined with Article 4(1) Brussels Ibis (Regulation 1215/2012) provided jurisdiction over both German and UK infringement claims against the German defendants.
What about jurisdiction for revocation?
The Local Division did not need to address whether it could revoke the UK part of the patent, since the defendants only sought revocation in UPC Contracting Member States. However, the Local Division nonetheless rejected proposals to stay proceedings pending UK validity proceedings or grant relief conditional on UK validity, finding no legal basis for such approaches: “Since revocation is not sought for the United Kingdom, there is no situation in which the Court has to decide whether it has jurisdiction to revoke the UK-part of the patent in suit.” (page 21). The Local Division noted that the defendants’ request for a declaration regarding UK validity “has no legal basis, at least in the counterclaim” (page 21).
Practical implications for UK rights
Whilst the headline from this case is that the UPC found it had jurisdiction for infringement in the UK, the Local Division nonetheless declined to grant remedies regarding UK infringement. It reasoned that: “Even though the UK part of the patent in suit is not covered by the counterclaim for revocation and, at least at the time of the conclusion of the oral hearing, no revocation action has been filed in the UK, the validity of the patent in suit is a prerequisite for an injunction and further orders based on a finding of infringement.” (page 60)
The Local Division also rejected proposals to stay proceedings pending UK validity proceedings or to grant relief conditional on UK validity: “R. 118.2. RoP only provides for such a possibility where a revocation action is pending between the same parties before the Central Division or an opposition is pending before the European Patent Office. An analogy presupposes an unforeseen gap in the law where the interests are the same. There is no such unforeseen gap in the present case” (page 61).
With respect to the German rights, the Local Division found that due to its finding of the invalidity of the patent, the infringement action in German was without any basis (page 60). Interestingly, the Local Division was also clearly of the view that its finding of invalidity would be applicable to the UK (given that the same provisions of the EPC would apply in the UK as in Germany). Nonetheless, the Local Division accepted that it had no jurisdiction to consider validity in the UK. In view of such a “factual and legal situation”, the Local Division concluded that the UK infringement action could not be successful (page 60).
Final thoughts
For patent holders and practitioners, the decision highlights both opportunities and limitations in UPC enforcement strategy regarding UK rights. Whilst infringement actions may be brought against EU-domiciled defendants, it appears from this decision that obtaining remedies may prove challenging without parallel UK validity proceedings.
Interestingly, post-Brexit and the UK’s decision to no longer participate in the UPC, there was some discussion that the UK courts might be used to “torpedo” the validity of Unitary Patents (PatKat was always a little sceptical of this, given the jurisdictional restrictions placed on the UK courts by the Moçambique principle in the UK, see IPKat). If the decision of the Local Division in UPC_CFI_355/2023 is anything to go by, the UK may conversely find itself subject to the long-armed jurisdiction of the UPC.
Further reading
- The Moçambique principle and challenging the validity of a foreign patent: GW Pharma v Otsuka [2022] EWCA Civ 1462 (Dec 2022)
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