A guide to the UPC and the UP - Flipbook - Page 102
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There has been some speculation as to whether torpedo actions, cross-border DNI actions,
could be used, for example, by the courts of non-Contracting EU Member States to stay actions
before the Court. However, the national court would have to be willing to grant such jurisdiction
and certainly, for example, the Spanish and Polish courts have not, to date, shown any
enthusiasm to do so under the EPC system.
Forum Shopping during the Transitional Period between the Court and the
courts of Contracting Member States and the effect of art.34 UPCA
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During the transitional period, actions relating to European patents which have not
been opted out may be brought either before the Court or the courts of Contracting
Member States. 94 In other words, the national courts have been granted auxiliary jurisdiction
for the transitional period despite the fact that under art.71b(1) Brussels I Regulation (recast),
in matters governed by the UPCA, the EU Member States are treated as having transferred
their jurisdiction to the Court. This somewhat messy compromise results in both the national
court and the Court having jurisdiction over issues of infringement and validity 95 during the
transitional period. The amendment to the Brussels I Regulation (recast) therefore contains
a simple solution to this issue: art.71c(2) provides that the rules on lis pendens and related
actions in arts 29 to 32 Brussels I Regulation (recast) are extended to cover the Court and the
courts of Contracting Member States during the transitional period. However, although the
solution may have been simple, it results in a number of significant problems. To explain
some of the complicating issues, it is worth looking first at some examples.
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When the Court is first seized with an infringement action against a product in relation to all
designations of a European patent and a national court of a Contracting Member State is
subsequently seized with an infringement or DNI action against the same product on the basis
of a national designation of that same European patent, there is lis pendens under art.29
Brussels I Regulation (recast) and the national court must decline jurisdiction.
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If the same scenario is repeated, but the products are different, the actions are not considered
to be the same cause of action for the purpose of art.29, even where the parties to the two
actions remain the same. This is because, following Roche v Primus, 96 infringement decisions
that bear on different products can be expected to be different in outcome and are therefore
reconcilable under art.8(1). Of course, the actions are related and therefore the court second
seized may stay its proceedings under art.30.
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However, if the order in which the actions are started is reversed and the first infringement
action is in the national court of a Contracting Member State, the analysis is made more
complicated by the wording of art.34 UPCA which 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.”
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95
96
It has been suggested that art.34 UPCA unifies the bundle of rights comprising a European
patent so that any action before the Court must involve all designations of the European
patent granted in Contracting Member States. If, however, the view prevails that it does not,
a European patent remains a bundle of different designations with the ability to “carve out”
one designation to be heard in a national court whilst an action over other designations can
be heard by the Court.
art.83(1) UPCA. See chapter 8 (The Transitional Provisions (Including Opt-outs and Opt-ins)).
Over issues of validity, both the Court and the national courts have exclusive jurisdiction under art.24(4)
Brussels I Regulation (recast) for the transitional period.
Roche Nederland BV & others v Frederick Primus & another (C-539/03) [2006] ECR I-6535.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 92
