A guide to the UPC and the UP - Flipbook - Page 101
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Further, since the traditional European patent does not have unitary effect, its national
parts are subject to the law and the jurisprudence of the different EPC Contracting States.
After the centralised application and validation procedure before the EPO, the various
national parts of the European patent usually have to be enforced and must always be
invalidated on a national level.
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In addition to different national patent laws, the procedural rules and customs of the national
courts have to be taken into account. Whereas in the Netherlands and France, for example,
validity and infringement issues are considered together in the same proceedings, Germany
and Austria traditionally follow a so-called bifurcated system where patent infringement and
validity of the patent in suit are generally dealt with in separate proceedings.
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“Torpedo” actions, that is to say cross-border DNI actions, have been used as a strategic
judicial tool in the EPC system for exploiting the nature of European patents as a bundle
of patents. The main aim of a torpedo action is to pre-empt and prevent injunctions grounded
on patent infringement in jurisdictions where such measures are swiftly granted. To achieve
this result, the torpedo action is filed in jurisdictions known to issue decisions in a longer
timeframe. This was the reason for the development of the so called “Italian torpedo”, 90
which has proved particularly useful for potential defendants seeking to protect themselves
from preliminary injunctions in Germany.
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The approach in the Brussels I Regulation (recast) is to avoid parallel proceedings and
irreconcilable judgments, and therefore gives the court first seized precedence. It is for
the court second seized to decide the limits of its jurisdiction; more specifically: 91
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Art.29 Brussels I Regulation (recast) provides that in proceedings involving the same cause
of action between the same parties, the court, other than the court first seized, must stay its
proceedings until such time as the court first seized establishes jurisdiction, in which case
the other court must decline jurisdiction; and
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Art.30 Brussels I Regulation (recast) provides that, in related actions, that is, actions which
are so closely related that it is expedient to hear and determine them together to avoid the
risk of irreconcilable judgments, the court other than the court first seized may stay its
proceedings and may, on application, decline jurisdiction. The CJEU has further defined
related actions as being those where there is a risk of conflicting decisions. 92
Under the EPC system, actions for infringement and applications for DNIs are considered the
same cause of action and so the rules on lis pendens in art.29 Brussels I Regulation (recast)
apply 93 whereas revocation actions and infringement actions are not considered to be related
actions in the EPC system (and, indeed, under the UPCA).
Forum Shopping as between the Court and National Courts
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Art.71c(1) Brussels I Regulation (recast) provides that the rules on lis pendens and related
actions in arts 29 to 32 Brussels I Regulation are (recast) extended to cover proceedings before
the Court and the courts of EU Member States which are not a party to the UPCA.
Detailed in Jandoli V, “The Italian Torpedo”, Int'l. R. Indus. Prop. & Copyright L., 2000, Vol. 31, p.783. See also The General
Hospital Corporation v Asclepion Laser, Joint divisions of the Italian Supreme Court, 10 June 2013 no. 14508, available on Pluris
online database. Further case law with developments and interpretation on Torpedo actions: Agilent v Oerlikon, Court of
Genoa, 11 March 2014; Plast-meccanica v Keter Plastic, Court of Bologna, 12 February 2014; Schindler v Otis Elevator Company,
Court of Milan, 16 January 2014, challenging the correctness of the quoted decision of the Supreme Court; and Anki v
Stadlbauer, Court of Rome, 5 February 2018 which affirmed its jurisdiction to hear such actions.
As between the courts of Member States and third states, arts 33 and 34 Brussels I Regulation (recast) apply.
Tatry v Maciej Rataj (C-406/92) [1994] ECR I-5439.
An action for a negative declaration is sub-form of an action under tort law and falls under art.7(2) Brussels I Regulation
(recast) (Folien Fischer v Ritrama (C-133/11) ECLI:EU:C:2012:664).
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 91
