The “long arm” of the Unified Patent Court

– on the property-based subsidiary international jurisdiction over defendants from non-EU states

Brief summary:

Art. 71b no. 3 of Regulation (EU) No. 1215/2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, as amended by Regulation (EU) No. 542/2014, grants the Unified Patent Court property-based subsidiary international jurisdiction over defendants who are not domiciled in a Member State of the European Union (EU). This allows to establish jurisdiction of the Unified Patent Court for a legal dispute concerning an infringement of a European patent by a defendant from a “non-EU state”. This “long arm” makes it possible to use the Unified Patent Court to claim damages arising from such an infringement outside the EU. In particular, Contracting States of the European Patent Convention that are not Member States of the European Union are in the focus of the “long arm”. However, if the defendant is domiciled in a Member State of the 2007 Lugano Convention, it should be protected from the “long arm”.

Core theses:

• The “long arm” gives the Unified Patent Court a geographically far-reaching jurisdiction for damages caused by a patent infringement outside the Member States of the European Union and thus also outside the Contracting Member States of the Unified Patent Court Agreement (UPCA).
• The UPC may have subsidiary jurisdiction for damages resulting from the infringement of a European patent in a Contracting Member State of the UPCA (narrower interpretation) or even due to an infringement in a Contracting Member State of the EPC which is not a Contracting Member State of the UPCA (broader interpretation).
• Practice will show in what form the UPC will exercise its subsidiary competence.
• However, defendants from Iceland, Norway or Switzerland should be safe from the “long arm” of the UPC due to the primacy of the 2007 Lugano Convention (Lugano Shield).

Introduction:

On 1 June 2023, the Unified Patent Court, or UPC for short, commenced its work.https://www.bmj.de/SharedDocs/Pressemitteilungen/DE/2023/0530_EPG_EU_Einheitspatent.html, https://www.unified-patent-court.org/en/news/unified-patent-court-opens-its-doors, each accessed on 07/06/2023. The UPC opens up interesting new possibilities for conducting patent disputes. This article takes a closer look at the possibilities arising from the UPC’s new property-based subsidiary international jurisdiction (also referred to as the “long arm” or long-arm jurisdiction of the UPC)The term long-arm jurisdiction is sometimes used in different ways. In this article, it refers to the jurisdiction of courts for proceedings that lie outside their actual territory. and which have already been the subject of a number of publications.See e.g. P. Véron, Extent of the Long-Arm Jurisdiction Conferred upon the Unified Patent Court by Art.71(b)(3) of the Brussels I Regulation as Amended by Regulation 542/2014 of May 15, 2014: Turkish Delight and a bit of Swiss Chocolate for the Unified Patent Court, European Intellectual Property, Review, Vol. 37, Issue 9, 2015, pp. 588-596; P. Mankowski, Die neuen Regeln über gemeinsame Gerichte in Artt. 71a-71d Brüssels Ia Regulation, GPR 2014, 330-342; P. A. de Miguel Asensio, The Unified Patent Court Agreement and the Amendment to the Brussels I Regulation (recast), in Luci e ombre del nuovo Sistema UE di tutela brevettuale, ISBN 978-88-348-4793-0, pp. 153-170, 2014.

In order to analyse the property-based subsidiary international jurisdiction, it may be worth to take first a look at the jurisdiction of the UPC in general. According to Art. 1 sentence 1 of the Agreement on a Unified Patent Court,Official Journal of the European Union, C 175 of 20 June 2013, p. 1. in short UPCA, the UPC is established for the settlement of disputes relating to European patents and European patents with unitary effect.See point (24) of the preamble to REGULATION (EU) No 1257/2012 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection. The UPC therefore serves not only to settle disputes relating to European patents with unitary effect, but also to settle disputes relating to European patents without unitary effect.The difference between the two forms of a European patent is explained in more detail in Art. 2 UPCA. Accordingly, the term “European patent” under Art. 2(e) UPCA refers to a patent granted under the EPC which does not have unitary effect under Regulation (EU) No 1257/2012. According to Art. 2(f) UPCA, a “European patent with unitary effect” means a patent granted under the EPC which has unitary effect under Regulation (EU) No 1257/2012.

Art. 3 UPCA further restricts the scope of the Agreement - and thus also of the UPC - to European patents “which [have] not yet lapsed at the date of entry into force of this Agreement or [are] granted after that date”. At the same time, according to Art. 3 UPCA, the scope covers supplementary protection certificatesI.e. a supplementary protection certificate granted under Regulation (EC) No. 469/2009 or Regulation (EC) No. 1610/96 pursuant to Art. 3(h) UPCA. and European patent applications “which [are] pending on the date of entry into force of this Agreement or which [are] filed after that date”. European patents that expired before 1 June 2023 and European patent applications that were filed before 1 June 2023 but were no longer pending on 1 June 2023 may therefore not to fall within the scope of the UPCA and thus within the jurisdiction of the UPC.

This probably also applies to patents that come into existence on the basis of an extension or validation agreement, because they are not granted under the provisions of the European Patent Convention (EPC),The abbreviation EPC stands in accordance with Art. 2 (d) UPCA for the Convention on the Grant of European Patents of 5 October 1973 with all subsequent amendments. It is also used in this way in the following. but on the basis of the national law of the extension or validation states.See e.g. Benkard, European Patent Convention, 4^th edition, Art. 3, para. 8.See also Guidelines for Examination in the European Patent Office A-III, 12.1. Patents in extension or validation states are therefore unlikely to be European patents within the meaning of the UPCASee Art. 2(e) UPCA. and should therefore not play a role in the following discussion. Similar arguments may apply to registrations in Hong Kong.

The territorial scope or effect of a European patent with or without unitary effect (or a European patent application) also plays a role in determining the jurisdiction of the UPC.Cf. Art. 2 (2), 3 EPC. To this end, it should be recalled that a European patent “ shall […] confer on its proprietor from the date on which the mention of its grant is published in the European Patent Bulletin, in each Contracting State in respect of which it is granted, the same rights as would be conferred by a national patent granted in that State “.See Art. 64(1) EPC. The term “European patent” therefore covers the entire bundle of national rights, irrespective of whether or not any part of this bundle has unitary effect. A European patent therefore initially concerns all Contracting States of the EPC.Montenegro (ME) became the 39^th Contracting State to the EPC on 1 October 2022 (OJ EPO 2022 A78). However, only 24 Member States of the European Union (EU) have signed the UPCA to date and only 17 of them have ratified it, i.e., only 17 of the Contracting States of the EPC are also Contracting Member States to the UPCA, i.e., so-called Contracting Member States pursuant to Art. 2 lit. c) UPCA.

Figure 1 illustrates the relationship between the Contracting States of the EPC and the Contracting Member States of the UPCA (and others).

The facts that not all Contracting States of the EPC have acceded to and ratified the UPCAMore precisely, have deposited a corresponding instrument, cf. Art. 84, 89 UPCA. and that the UPCA will not be accessible to a number of these states in the near future immediately raise questions regarding the international jurisdictionterritorial jurisdiction in the sense of the English term jurisdiction (cf. the English version of Art. 31 UPCA), to be distinguished from the subject-matter jurisdiction of a court in the sense of the English term competence (cf. the English version of Art. 32 UPCA). of the UPC; among other questions, whether and, if so, to what extent the UPC can also settle disputes concerning, for example, the British or Turkish part of a European patent?

At first sight, one would probably expect the UPC not to have jurisdiction over the latter due to the principle of territoriality, even though it is formally supposed to have jurisdiction over disputes concerning the whole bundle. However, as we shall see, the UPC’s “arm” extends beyond the territory of the UPCA’s contracting member states, at least in certain cases.

An answer to the above questions can be found in Art. 31 UPCA. The article states that the international jurisdiction of the UPC “shall be established in accordance with Regulation (EU) 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 the UPC is a court common to the Contracting Member States of the UPCA and is therefore subject to “the same obligations under Union law as any national court of the Contracting Member States”,See Art. 1 s. 2 UPCA. Art. 31 UPCA merely reflects the applicable law of the EU. Accordingly, the jurisdiction of the UPC - as with any national court of the Member States of the EU - is determined on the basis of Regulation (EU) No. 1215/2012, Brussels Ia for short, also referred to as the Brussels I Regulation, and the Convention on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters of 30 October 2007,Official Journal of the European Union, L 147 of 10 June 2009, p. 5. the 2007 Lugano Convention for short. However, the UPC’s property-based subsidiary international jurisdiction cannot be found in either Brussels Ia or the 2007 Lugano Convention. It can be found in the so-called Brussels Ib Regulation, which is analysed in more detail below.

The Brussels Ib Regulation - an overview:

As a court common to the Contracting Member States of the UPCA, the UPC is not subject to the articles of the Brussels Ia Regulation. The Brussels Ia Regulation was therefore amended accordingly by Regulation (EU) No 542/2014 of the European Parliament and of the Council of 15 May 2014Official Journal of the European Union, L 163, 29.5.2014, p.1. in order to embed common courts, such as the UPC in particular, in the EU court system.This also integrated the Benelux Court of Justice into the EU court system.Point (4), Preamble to Regulation (EU) No 542/2014. The amendment to the Brussels Ia Regulation has been in force since 10 January 2015.See Art. 2 of Regulation (EU) No 542/2014. The amended Brussels Ia Regulation is hereinafter also referred to as the Brussels Ib Regulation or Brussels Ib for short.

Brussels Ib comprises four new articles, Art. 71a - 71d Brussels Ib. Art. 71a Brussels Ib first defines what is meant by a common court. Art. 71c Brussels Ib concerns pendency and related proceedings. Art. 71d Brussels Ib concerns the recognition and enforcement of judgements of a common court. Art. 71b Brussels Ib governs the jurisdiction of a common court and thus also the UPC’s property-based subsidiary international jurisdiction. Art. 71b Brussels Ib reads:

“The jurisdiction of a common court shall be determined as follows:

(1) a common court shall have jurisdiction where, under this Regulation, the courts of a Member State party to the instrument establishing the common court would have jurisdiction in a matter governed by that instrument;

(2) where the defendant is not domiciled in a Member State, and this Regulation does not otherwise confer jurisdiction over him, Chapter II shall apply as appropriate regardless of the defendant’s domicile.

Application may be made to a common court for provisional, including protective, measures even if the courts of a third State have jurisdiction as to the substance of the matter;

(3) where a common court has jurisdiction over a defendant under point 2 in a dispute relating to an infringement of a European patent giving rise to damage within the Union, that court may also exercise jurisdiction in relation to damage arising outside the Union from such an infringement.

Such jurisdiction may only be established if property belonging to the defendant is located in any Member State party to the instrument establishing the common court and the dispute has a sufficient connection with any such Member State.“

The first and second points of Art. 71b Brussels Ib embed common courts, such as the UPC in particular, in the system of national courts of the Member States of the EU. The second point should be emphasised in this respect. It regulates the jurisdiction of the UPC over defendants who are not domiciled in a Member State of the EU and in cases where jurisdiction over them cannot be established otherwise under Brussels Ib, in short: over defendants from non-EU states, i.e. so-called third states.See point (7), sentence 1 of the preamble to Regulation (EU) No 542/2014. While national courts can fall back on national provisions in these cases via Art. 6 Brussels Ia, a common court cannot do so due to the lack of an “own” national law. Rather, it can be called upon in these cases on the basis of Art. 71b no. 2 in conjunction with Chapter II Brussels Ib. From the perspective of a potential plaintiff, this can certainly be seen as progress in dealing with defendants from third countries and is also in line with the principles of the Brussels Ia Regulation, according to which the jurisdiction rules should be “highly predictabe”.See point (15), sentence 1 of the preamble to Regulation (EU) No 1215/2012.

Art. 71b no. 3 Brussels Ib introduces the property-based subsidiary international jurisdiction. This means that for patent infringements that have led to damage within the EU and for which the UPC has jurisdiction under Art. 71b No. 2 Brussels Ib, subsidiary jurisdiction of the UPC can be established for damages outside the EU from such infringements.See point (7), sentence 1 of the preamble to Regulation (EU) No 542/2014. The factual elements to be fulfilled in Art. 71b No. 3 Brussels Ib are:

1. The defendant is not domiciled in a Member State of the EU and the UPC’s jurisdiction over the defendant cannot be established otherwise under Brussels Ib.
2. A European patent has been infringed.
3. The infringement led to damage within the EU.
4. Such an infringement also led to damage outside the EU.
5. The defendant has property located in a Contracting Member State that is a party to the agreement establishing the common court.
6. The legal dispute has a sufficient connection to such a Contracting Member State.

Analysis, possible interpretations and discussion of the subsidiary jurisdiction – the “long arm” of the UPC

The possible interpretations of subsidiary jurisdiction and of the above-mentioned factual elements are wide-ranging. Among other things, it is argued that the new Art. 71b No. 3 Brussels Ib establishes a limited jurisdiction for the UPC for the infringement of a European patent in countries that are Contracting States of the EPC but not Member States of the EU,P. Véron, Extent of the Long-Arm Jurisdiction Conferred upon the Unified Patent Court by Art.71(b)(3) of the Brussels I Regulation as Amended by Regulation 542/2014 of May 15, 2014: Turkish Delight and a bit of Swiss Chocolate for the Unified Patent Court, European Intellectual Property, Review, Vol. 37, Issue 9, 2015, p. 588, right column, penultimate paragraph. or in the original:

“This is the result of the new art.71(b)(3) of the Brussels I Regulation as amended by Regulation 542/2014 giving (limited) jurisdiction to this court for acts of infringement of a European patent committed in countries that are signatories to the European Patent Convention but not Member States of the EU […]”Ibid.

The subsidiary jurisdiction thus provides a legal basis for the UPC to decide on an infringement of a patent that is in force in a territory outside a Member State of the EU (and thus also outside a Contracting Member State of the UPCA) and at the same time within a Contracting State of the EPC.P. Véron, Extent of the Long-Arm Jurisdiction Conferred upon the Unified Patent Court by Art.71(b)(3) of the Brussels I Regulation as Amended by Regulation 542/2014 of May 15, 2014: Turkish Delight and a bit of Swiss Chocolate for the Unified Patent Court, European Intellectual Property, Review, Vol. 37, Issue 9, 2015, p. 593, line column, penultimate paragraph.

On the other hand, there is a narrower interpretation according to which an act of infringement of a European patent has taken place in an EU Member State, whereby the infringement in the EU Member State has led to damage within the EU Member State and/or another EU Member State and additionally to damage outside the EU. The above-mentioned broader interpretation also assumes such an act of infringement in order to justify the damage within the EU, but requires a further act of infringement outside the EU to cause damage outside the EU.

Due to the different possible interpretations, the above-mentioned elements of property-based subsidiary jurisdiction pursuant to Art. 71b No. 3 Brussels Ib are analysed in more detail below. The focus will be on the last part of sentence 1 and sentence 2 of no. 3 of Art. 71b Brussels Ib, i.e., on the factual elements 4 to 6.

1^st factual element (defendant from third country)

The reference of Art. 71b No. 3 p.1 Brussels Ib to Art. 71b No. 2 Brussels Ib refers in particular to a defendant from a third country,See also, for example, the first paragraph of section III 4. in P. Mankowski, Die neuen Regeln über gemeinsame Gerichte in Artt. 71a-71d Brüssel Ia-VO, GPR 2014, 330-342. i.e., to cases in which the defendant is not domiciled in a Member State of the EU and the Brussels Ia/lb Regulation does not otherwise establish jurisdiction over him. This means that the UPC’s jurisdiction under Art. 71b No. 3 Brussels Ib cannot be established for defendants domiciled in a Member State of the EU that is not a contracting state of the UPCA - such a defendant should be safe from the “long arm” of the UPC in this respect. This applies to Spain, Poland and Croatia as well as the Member States of the EU that have signed the UPCA but have not yet ratified it. These are Greece, Ireland, Romania, Slovakia, the Czech Republic, Hungary and Cyprus. These states thus create a gap between the scope of the UPCA and the “long arm” of the UPC.

2^nd factual element (infringement of a “European patent”)

Furthermore, according to Art. 71b No. 3 S.1 Brussels Ib, there should be an infringement of a European patent. This might be clear reading the English versions of Brussels Ib and the UPCA. However, the term “European patent” appears conspicuous at least in the German version of Art. 71b No. 3 Brussels Ib. In contrast to the German wording of the UPCA, it is capitalized.This discrepancy does not exist in the English version of the UPCA or the Brussels Ia. The capitalization could be an indication that the term “European patent” is not intended to be the same as a “European patent” within the meaning of the UPCA.So according to Art. 2 e) without uniform effect. Ultimately, however, the aim is to integrate the UPC into the EU court system. Since the UPC is competent for European patents with and without unitary effect, it would therefore make little sense to restrict its jurisdiction to European patents without unitary effect (see the discussion in the introduction). The term “European patent” should therefore cover European patents with and without unitary effect.

It is well known that the infringement of a European patent without unitary effect is determined in accordance with national law pursuant to Art. 64 EPC. This also applies to European patents with unitary effect. According to Art. 5 of Regulation (EU) No 1257/2012, a European patent with unitary effect “shall confer on its proprietor the right to prevent third parties from committing acts against which that patent provides protection within the territories of the participating Member States in which the patent has unitary effect, subject to any applicable limitations”.

The actions from which third parties can be prevented are determined in accordance with Art. 5(3) in conjunction with Art. 7 of Regulation (EU) No. 1257/2012 according to national law.

As all Contracting States of the EPC are also Member States of TRIPS,Agreement on Trade-Related Aspects of Intellectual Property Rights (Federal Law Gazette, Volume 1994, Part II, p. 1438, 1730). the protection defined by Articles 28 and 30 TRIPS should provide the minimum level for defining the rights arising from the national part of a European patent or from a European patent with unitary effect. This protection is set out in Art. 25, 26 UPCA with the limitations set out in Art. 27 - 30 UPCA, which appear to be in line with Art. 30 TRIPS. This makes clear, at least in principle, which acts can be categorised as an infringement of a European patent within the meaning of Brussels Ib.

3^rd factual element (damage within the EU)

Furthermore, according to Art. 71b No. 3 sentence 1, there must have been damage within the EU due to the infringement. The connecting factor here could beSee inter alia point (13) of the preamble to Regulation (EU) No 1257/2012. Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights,Official Journal of the European Union L 157 of 30 April 2004. hereinafter referred to as the Enforcement Directive. In particular, Article 13(1) of the Enforcement Directive states:

“Member States shall ensure that the competent courts, at the request of the injured party, order the infringer who knew or ought reasonably to have known that he was committing an infringing act to pay the rightholder appropriate damages to compensate for the actual prejudice suffered by the rightholder as a result of the infringement.”

The damage should therefore be attributable to an infringement or one of the above-mentioned infringing acts.See also point (26) of the preamble to the Enforcement Directive.

4^th factual element (damage outside the EU due to such an infringement)

The most questionable point in Art. 71b(3)(1) Brussels Ib is probably the criterion “damage arising outside the Union from such an infringement”. The interpretation of this factual element is likely to be decisive in determining how far the “long arm” of the UPCA actually reaches.

Since the first sentence of Art. 71b No. 3 Brussels Ib concerns an infringement of a European patent, the term “such an infringement” in the second sentence should refer to an or the infringement of the same European patent. Otherwise, infringement disputes concerning different European patents could be interwoven, which seems to go far beyond the intention of the legislator.

If we now decide on the “same” European patent, we can also ask about the damage. Does this mean damage in accordance with Art. 13 Enforcement Directive or is the “damage arising outside the Union” to be determined in accordance with the respective national law? At this point, however, a consistent interpretation of the term “damage” seems to be appropriate, as this should be interpreted as a characteristic of an EU law standard in the light of the Enforcement Directive, irrespective of whether it is about a “damage within the Union” or about a “damage outside the Union”. Thus, the term “damage arising outside the Union” should be interpreted in the same way as the term “damage within the Union”.

As described above for the term “damage within the Union”, the damage should be attributable to an infringement or an infringing act, namely to “such an infringement”.

Since damage is therefore linked to an infringement, it can be assumed that if the damage occurred outside the EU, the infringement or the infringing act must also have taken place outside the EU. The European patent - as a right that is infringed in this context - must therefore also have had an effect outside the EU. This justifies the view that Art. 71b No. 3 Brussels Ib refers to an infringement in a Contracting State of the EPC that is not a Contracting Member State of the UPCAP. Véron, Extent of the Long-Arm Jurisdiction Conferred upon the Unified Patent Court by Art.71(b)(3) of the Brussels I Regulation as Amended by Regulation 542/2014 of May 15, 2014: Turkish Delight and a bit of Swiss Chocolate for the Unified Patent Court, European Intellectual Property, Review, Vol. 37, Issue 9, 2015. (see Figure 2). This corresponds to a broader interpretation of the term “such an infringement” as “an infringement of the same European patent” in the sense of an infringement by a further infringing act outside the EU, whereby the infringing act outside the EU is, however, linked to the infringing act within the EU by the reference “such”.

In contrast, another position can be adopted by interpreting the criterion of “such an infringement” as “the infringement of the same European patent”. This interpretation is based solely on an infringement within the Contracting Member State of the UPCA, namely on precisely the infringement that also led to the “damage within the Union”. The infringing act should also have given rise to the damage outside the EU. With this narrower interpretation, the UPCA reaches a smaller territory with regard to the act of infringement than with the broader interpretation, but the UPC’s power of cognition concerning the damage could be independent of any effect of the European patent outside the Contracting Member States of the UPCA. In addition, damage outside the EU could also mean damage outside the Contracting States of the EPC (see Figure 3), e.g., in the USA.

Such a case constellation arises, for example, through the manufacture of a product or components that are later assembled into the product within the scope of a patent and the subsequent sale of the product and/or the subsequent assembly of the components in a patent-exempt foreign country. In this case, the infringement of the patent already results in damage within the scope of the patent,Deutscher Bundestag Drucksache 16/5048 vom 20.04.2007, Gesetzentwurf der Bundesregierung Entwurf eines Gesetzes zur Verbesserung der Durchsetzung von Rechten des geistigen Eigentums, page 37, right column. but the relevant part of the damage (e.g., in terms of lost profits or orders) can occur in the patent-exempt foreign country.

In the past, such damages were already considered to be part of the infringement of a patent and penalised accordingly.See, for example, WesternGeco LLC v ION Geophysical Corp, 837 F. 3d 1358; BGH Schutzverkleidung, X ZR 95/18, is likely to apply in a similar way, see in particular paras 46 to 48.See, for example, the second paragraph of section III 6. a) in P. Mankowski, Die neuen Regeln über gemeinsame Gerichte in Artt. 71a-71d Brüssel Ia-VO, GPR 2014, 330-342. This generally speaks against the narrower interpretation, as Art. 71b No. 3 Brussels Ib would thus be superfluous or represent a duplication.See also, for example, the third paragraph of point 3.3 in P. A. de Miguel Asensio, The unified patent court agreement and the amendment to the Brussels I Regulation (recast), in Luci e ombre del nuovo Sistema UE di tutela brevettuale, ISBN 978-88-348-4793-0, pp. 153-170, 2014. However, such duplications are not unusual in the context of the UPCA,See, for example, the duplications resulting from Art. 20, 24 (1) a) and 31 1^st alternative UPCA. so that this interpretation should not be rejected for this reason alone.

Both views also appear to be in line with the travaux preparatoires on Art. 71b (3) Brussels Ib,Procedure 2013/0268/COD, COM (2013) 554: Proposal for a REGULATION OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL amending Regulation (EC) No 1215/2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters. according to which “access to the Unified Patent Court […] will be ensured in situations where the defendant is not domiciled in an EU Member State as access is ensured in situations where the defendant is domiciled in an EU Member State”. The travaux preparatoires even contain an example to illustrate this:

“For instance, with respect to the Unified Patent Court, the asset-based jurisdiction would ensure that the Court would have jurisdiction vis-à-vis a Turkish defendant infringing a European patent covering several Member States and Turkey.”

The example illustrates that a Turkish defendant who has infringed a European patent covering several Member States and Turkey should fall under the asset-based, i.e., property-based, subsidiary international jurisdiction. However, the example raises some questions: Why is the defendant Turkish in particular? Is he or she supposed to have a seat in a Contracting State of the EPC? Where has an infringing act of the European patent occurred?

In any case, the broader interpretation according to which jurisdiction of the UPC can be established for damages due to infringing acts in countries that are not Contracting Member States of the UPCA seems to be justifiable. However, let us first look at the remaining factual elements before drawing a conclusion.

5^th factual element (property in a member state of the UPCA)

The defendant must also own property that is located in a Contracting Member State of the UPCA. The property may be, for example, real estate.Cf. example 5a described in para. 69 of the EPO publication “The jurisdiction of European courts in patent disputes” 2022 (available at epo.org/brussels-scenarios, accessed on 13 June 2023). The existence of a connection between the property and the infringement of the European patent is not specified in detail, except that the value of the property should be in proportion to the damage caused in order to enable enforcement,See point (7), sentence 3 of the preamble to Regulation (EU) No 542/2014. and furthermore it should not be capable of establishing the jurisdiction of the UPC under Brussels Ia in any other way (which would be the case, for example, in the case of patent infringing products).See, for example, the penultimate paragraph of point 3.3 in P. A. de Miguel Asensio, The unified patent court agreement and the amendment to the Brussels I Regulation (recast), in Luci e ombre del nuovo Sistema UE di tutela brevettuale, ISBN 978-88-348-4793-0, pp. 153-170, 2014. It therefore seems clear that the property is not only intended to establish the jurisdiction of the UPC, but also to ensure the enforceability of a corresponding decision.

6^th factual element (reference to a contracting member state of the UPCA)

The legal dispute should have a sufficient connection to “any such Member State”. This could now be interpreted similarly to the term “such an infringement”, i.e., the litigation must have a connection to the same UPCA Contracting Member State in which the defendant’s property is located.See, for example, the last paragraph of section III 6. b) in P. Mankowski, Die neuen Regeln über gemeinsame Gerichte in Artt. 71a-71d Brüssel Ia-VO, GPR 2014, 330-342. However, “such” is preceded here by “any” so that a reference to any contracting member state of the UPCA seems to be sufficient.

Moreover, examples of such a connection are given in point (7) of the preamble to Regulation (EU) 542/2014. If evidence of the infringing acts is located in a Contracting Member State of the UPCA, a link within the meaning of sentence 2 of no. 3 of Art. 71b Brussels Ib would be established. The domicile of the defendant is also mentioned, but will only play a role in cases in which the obvious contradiction to the first factual element can be resolved.

Discussion:

The UPC’s property-based subsidiary international jurisdiction relates to cross-border disputes concerning damages within and outside the EU resulting from the infringement of a European patent. With regard to proceedings outside the EU, the UPC’s jurisdiction is limited to damages and/or damages related to the infringing acts. Art. 71b no. 3 Brussels Ib should therefore not provide a basis for the UPC to determine whether an infringement has occurred in a third country per se. Rather, such an infringement must be linked to an infringement in a member state of the UPCA. This applies in particular to acts of infringement in a third country that are directly attributable to acts of infringement in a Contracting Member State of the UPCA. Examples of this are the production of infringing products/components in a Contracting Member State of the UPCA and the delivery of the products/assembly of the components to a third state. Another example would be the uploading of an infringing offer to a server that can be accessed both in a Contracting Member State of the UPCA and in a third country. Other examples are conceivable. However, acts of infringement in a third country that only peripherally affect the territory of the UPCA or require an examination of the infringement under the national law of the third country are likely to form the limits of the UPC’s property-based subsidiary international jurisdiction.

The territorial scope of the “long arm” varies depending on the interpretation of the term “such an infringement outside the Union”. While according to the above-mentioned broader interpretation, damages can be collected in Contracting States of the EPC that are not EU member states (see Figure 2), according to the above-mentioned narrower interpretation, it also appears to be possible to claim damages outside the Contracting States of the EPC (see Figure 3). This is briefly illustrated by Figs. 2 and 3:

Lugano shield:

For the sake of completeness, a further element should be mentioned in this context. In order to strengthen legal and economic cooperation between the EU and certain Member States of the European Free Trade Association,Preamble to the 2007 Lugano Convention. the Convention on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters,Official Journal of the European Union L 147 of 10 June 2009, p. 5. hereinafter referred to as the 2007 Lugano Convention, was concluded between the EU and three of the four member states of the European Free Trade Association.Iceland, Liechtenstein, Norway and Switzerland are member states of the European Free Trade Association. The three member states of the European Free Trade Association are Iceland, Norway and Switzerland. Liechtenstein is not a Contracting Member State to the 2007 Lugano Convention.

Art. 73 of the Brussels I Regulation explicitly states that “[this] Regulation shall not affect the application of the 2007 Lugano Convention”. Similarly, the 2007 Lugano Convention also stipulates that the application of the Brussels I Regulation remains unaffected.Article 64 (1) of the 2007 Lugano Convention. This is immediately followed by a restriction:Article 64 (2) of the 2007 Lugano Convention.

“However, this Convention shall in any event be applied

(a) in matters of jurisdiction, where the defendant is domiciled in the territory of a State where this Convention but not an instrument referred to in paragraph 1 of this Article applies, or where Articles 22 or 23 of this Convention confer jurisdiction on the courts of such a State; […]“

In a Contracting State of the EPC and the 2007 Lugano Convention which is not a Member State of the EU, the Brussels I Regulation or Brussels Ib as its successor shall not apply. Unless there is already exclusive jurisdiction of a court of a state bound by the Lugano Convention pursuant to Article 22 of the 2007 Lugano Convention or a choice of court agreement pursuant to Article 23 of the 2007 Lugano Convention, the 2007 Lugano Convention applies and not the Brussels Ib Regulation. This means that defendants domiciled in one of the three member states mentioned above cannot be reached in the Member State of the European Free Trade Association through the long arm of the UPCA, at least unless the 2007 Lugano Convention is amended in the same way as the Brussels I Regulation. However, this appears to be unlikely at least at the moment.

We would like to thank Dr. Olga Bezzubova and Dr. Malte Köllner for very good discussions on the topic and many constructive suggestions for this article.

Dr. Matthias Grob, German Patent Attorney, European Patent Attorney, European Patent Litigator, Pavant Patentanwälte, Hamburg, Germany

Dr. Rainer Härtle, European Patent Attorney, European Patent Litigator, Köllner & Partner mbB, Patentanwälte, Frankfurt am Main, Germany

Note from the Editorial Committee: This article has already been published in the German journal “Mitteilungen der deutschen Patentanwälte” (Carl Heymanns Verlag)

Comments