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The Unified Patent Court has clarified that it has jurisdiction to determine claims for infringement in non-contracting states of the UPC, for instance the UK, in certain circumstances. In this article, Abbie Buckler explores the case in point and what it means for patent owners.
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The UK is not a contracting state of the UPC. As a result, it was always assumed that the UPC’s jurisdiction could not extend to the UK. However, the Düsseldorf Local Division of the UPC has recently clarified that, in certain circumstances, the UPC has jurisdiction over the UK (and other non-contracting jurisdictions) with respect to infringement actions.
The case concerned Fujifilm’s EP 3594009 (“EP’009”), in force in both Germany (which is contracting state of the UPC) and the UK (which is not a contracting state of the UPC). Fujifilm brought an infringement action against a group of Kodak companies, all based in Germany, aiming to stop Kodak from making or marketing the allegedly infringing products within Germany and the UK. Kodak filed a counterclaim for revocation of EP’009. Kodak also argued that as Germany is a contracting state to the UPC but the UK is not, the UPC does not have jurisdiction to determine infringement of the UK designation of EP’009.
A significant proportion of the judgment focussed on the technical revocation issues. The UPC found EP’009 was invalid and, therefore, ordered it to be revoked.
Separately, the Düsseldorf Local Division considered whether it had jurisdiction to consider the issue of infringement in the UK. The Court determined that it did have jurisdiction. Article 2 of the Brussels Convention provides that persons domiciled in a contracting state of the UPC shall, whatever their nationality, be sued in the courts of that jurisdiction. But the UPC went further, holding that the UPC also has jurisdiction to determine claims for infringement in non contracting states – for instance, the UK. Therefore, a patent holder may bring all their infringement claims before the UPC to obtain comprehensive relief from a single forum.
This does appear to be a significant over-reach from a jurisdictional perspective by the UPC and it will be interesting to see whether the decision is appealed (we suspect it will be) and how this is addressed on appeal.
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This is for general information only and does not constitute legal advice. Should you require advice on this, or any other Unified Patent Court related topic, then please contact upc@hlk-ip.com or your usual HLK advisor.
