Introduction

The jurisdiction landscape under the Unified Patent Court (“UPC”) system is set out across a number of legal texts. Practitioners must navigate the interweaving threads of the UPC Agreement (“UPCA”), the recast Brussels Regulation (“BR”)[1], the Lugano Convention (“Lugano”)[2] and Rules of Procedure (“RoP”).[3] In this article, we provide a guide to the fundamentals and sign-post areas where some questions remain.

Does the UPC have jurisdiction at all?

The UPCA provides that the UPC’s international jurisdiction (i.e. its jurisdiction vis-à-vis other adjudicating bodies) is governed by the BR and Lugano (Art 31 UPCA). The former provides that the UPC is a common court to be treated as equivalent to a member state (“MS”) court for jurisdiction purposes (Art 71a(1) BR) and has jurisdiction where the courts of an EU MS which is party to the UPCA would have jurisdiction (Art 71b(1) BR).

To determine if such MS courts would have jurisdiction, one looks to the jurisdiction regime set out in BR. The general rule is that the courts of the territory of the defendant’s domicile have jurisdiction (Art 4 BR). There are, however, several alternative bases for “special jurisdiction” including:

• place of infringement (Art 7(2));
• in the case of multiple defendants, the place where one of the defendants is domiciled (subject to certain conditions, Art 8(1));

Thus for example, the UPC has international jurisdiction over an infringement claim against a German company regarding acts in France by virtue of either Germany’s jurisdiction under Art 4 BR or France’s under Art 7(2) BR.

Where validity is disputed, the courts of the MS where the patent is registered have exclusive jurisdiction (BR Art 24(4)), (although this provision stands alongside Art 32(d) UPCA which grants the new court exclusive jurisdiction over the validity of European Patents not opted out of the system, thus it will be interesting to see how the UPC resolves this apparent conflict in parallel proceedings).

Jurisdiction over which types of patent?

The UPC has jurisdiction over disputes regarding European patents with unitary effect, conventional European patents (not opted out) and SPCs issued for products protected by a patent (Art 3 UPCA).

Which type of dispute?

The UPC has exclusive jurisdiction over the broad list of disputes at Art 32 UPCA (including infringement, DNIs, provisional measures, revocation). For these, parties cannot start litigation in national courts of Contracting MS and must go before the UPC, except that during the (initial seven, potentially 14 year) transitional period, patent infringement/revocation actions and SPC declaration of invalidity/infringement actions may still be brought before national courts (Art 83 UPCA).

There is some debate as to whether the UPC has non-exclusive competence regarding matters not expressly listed in Art 32 UPCA (such as FRAND determinations).

Which division of the UPC has competence?

The UPC comprises a Court of First Instance (“CFI”), Court of Appeal and a Registry. The CFI contains a central division and local/regional divisions.

When doors open on 1 June 2023, the central division seats will be in Paris and Munich. A third seat in Milan will become operational within a year[4]. At the outset 10 Local divisions have their own local divisions (with Germany having four) and there is a regional division (the Nordic Baltic Division) representing Sweden, Latvia, Lithuania and Estonia. The Court of Appeal will be situated in Luxembourg.

Without the agreement of the other side, the division of the CFI in which you must start a claim depends on the cause of action and is prescribed by Arts 32-33 UPCA. Otherwise, the parties may agree to bring any type of action before any division (except claims regarding EPO decisions, which must be before the central division).

Infringement (and others)[5]:

• the local/regional division where (a) the infringement occurred/may occur, or (b) where the defendant (or 1 of multiple defendants) is domiciled; or
• the central division if: (a) the relevant Contracting MS per the above does not have a local/regional division; or (b) the defendant is domiciled outside a Contracting MS (in which case the claimant thus can choose between bringing the case centrally, as well as having option of the local/regional division where the harm occurs as per the above). Also if a revocation action is already pending before the central division, the patentee can either bring an infringement action centrally (by way of counterclaim) or before any local/regional division as above.

Revocation/declarations of non-infringement – central division unless there is already a pending infringement action before a local/regional division, in which case the action must be brought there too.

Where a counterclaim for revocation is raised in infringement proceedings, the local/regional division may:

(a) proceed with both the infringement action and revocation counterclaim (requesting a technical judge);

(b) refer the counterclaim to the central division whilst suspending/proceeding with the infringement action (thus allowing for bifurcation); or

(c) refer both aspects to the central division, if the parties agree.

A local/regional division has the same discretion to proceed with an infringement claim where it was brought there as a stand-alone action when a revocation action was already pending before a central division (Art 33(5) UPCA).

Exactly which central division seat has competence over invalidity proceedings depends upon the technological subject matter. Those previously allocated to London were recently provisionally redistributed between Paris (human necessities) and Munich (chemistry and metallurgy) (see our update here).

Meanwhile, where multiple local divisions have jurisdiction (e.g. cross-border infringement), claimants can choose which local division to start their claim in.

Transferring claims between divisions:

This may occur where:

• there is a dispute as to correct jurisdiction – A defendant can lodge a Preliminary objection concerning the jurisdiction and competence of the Court or the competence of the division chosen by the claimant. This must be done within one month of service of the Statement of claim (Rule 19 RoP);
• there is widespread infringement – Where an infringement action has been brought in a regional division and infringement has occurred in the territories of 3+ regional divisions, the defendant can request the case be transferred to the central division (Art 33(2) UPCA); or
• there are multiple actions concerning the same patent (whether or not between the same parties) pending before different panels of the Court (divisions or panels of the Court of Appeal) – the panels may decide that the actions should be joined and heard together (Rule 340 RoP).

Territorial scope of decisions

Decisions of the UPC regarding European patents will cover the territory of those Contracting MS for which the European patent has effect (Art 34 BR).

There is some debate regarding whether this means that UPC decisions must apply to all designations of a European patent, or whether parties can limit the remit of the relief sought to particular territories. The latter interpretation would permit a national infringement action to continue alongside a UPC infringement action for the remainder of the designated Contract MS between the same parties and seems to be the favoured interpretation at this point.

Parallel proceedings

BR’s rules regarding parallel proceedings will be relevant where there are co-pending cases before the UPC and:

1. a national court of a UPCA Contracting MS during the transitional period (regarding a non-opted out European patent); or
2. a national court of an EU MS which is not a UPCA Contracting MS (e.g. Spain) (Art 71(c) BR).

At a high level, Arts 29-32 BR provide that in these situations:

• same parties & same cause of action – the court first seised must accept jurisdiction and the second court must stay its proceedings (exceptions apply); and
• related actions (similar cause of action, related parties) – the second court may choose to stay proceedings.

Parallel proceedings could arise also before the UPC and a national court of country which is not a MS of the EU (and thus, neither of the UPCA) (aka a “third state” like the UK). Arts 33-34 BR explain what to do and the rules differ depending on the degree of commonality of the actions:

• same parties & same cause of action already pending before a third state where the UPC also has jurisdiction under Arts. 4, 7, 8 or 9 BR – the UPC may stay its proceedings provided: (i) the third state court is expected to give a judgment capable of recognition and enforcement the UPC; and (ii) the UPC is satisfied that staying the proceedings is necessary for the proper administration of justice (Arts. 33 and 34 BR).
• the UPC action is related to the third state court action – the UPC again has a discretion to stay if it is expedient to hear and determine related actions together to avoid the risk of irreconcilable judgments arising, plus (i) and (ii) as above apply.

“Long-arm jurisdiction”

Some practitioners have taken the position that the UPC benefits from a so-called “long-arm jurisdiction”. This is chiefly said to arise from two BR provisions:

1. Art 71b(2) provides that the UPC rules on jurisdiction apply “as appropriate” to a defendant domiciled outside of the BR Contracting MS and not otherwise caught by the regulation. Even if the courts of a third state have jurisdictions to the substance of the matter, the UPC can hear applications for provisional measures. Some suggest this means that the UPC could grant preliminary injunctions in respect of European patents in non-EU territories. No doubt, litigation testing this point will be eagerly watched.
2. Art 71b(3) provides that the UPC has jurisdiction regarding damage outside the EU arising from infringement of a European patent which also gives rise to damage within the EU (if the defendant has property within any Contracting MS and the dispute has a sufficient connection with any such MS and where the UPC has jurisdiction over a defendant under art 71b(2)). Again, we expect to receive in due course judicial clarification as to whether this is limited to ex-EU damage caused by intra-UPC Contracting MS infringement, or whether it extends to self-standing ex-EU, non-Lugano[6] infringement too.

For more on these issues, see our article here.

[1]   Regulation (EU) No 1215/2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (recast)

[2]   Convention on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, done at Lugano on 30 October 2007, including any subsequent amendments

[3]   Given the substantive overlap between Lugano and BR, for ease, we refer to the BR provisions in this article

[4]   See update here

[5]   Provisional and protective measures and injunctions; damages; prior use

[6]   The Lugano Convention does not contain provisions equivalent to Art 71b(2)-(3) – so this type of regime does not apply to Lugano MS