A guide to the UPC and the UP - Flipbook - Page 103
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If it is correct that art.34 UPCA unifies European patents and if a national DNI action is launched
in a Contracting Member State, it will block any subsequent infringement action involving the
same parties and the same product brought before the Court under the lis pendens rule in
art.29 Brussels I Regulation (recast). The effect of this is to pin the patent (which has not been
opted out) into the national court system for the duration of the DNI action. However, if a carve
out is permitted relating to the particular Contracting Member State where the DNI was
launched, there would be no blocking effect of the lis pendens rules on the Court action,
although, as the two actions would be considered related, the Court would have the discretion
to stay the proceedings under art.30.
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There are similar issues to consider in relation to revocation actions. If, for example, in order
to resolve what is perceived as merely a local issue, a potential infringer applies to revoke a
European patent before the national court of a Contracting Member State, the patentee might
choose to retaliate by issuing infringement proceedings before the Court on the basis of all
designations of the same European patent. This second action is not the same cause of action
as the first and the infringement proceedings will not be stayed. However, if the unifying theory
is correct, the alleged infringer will now be unable to challenge any designation of the European
patent by way of counterclaim because of lis pendens under art.29 Brussels I Regulation
(recast). The alleged infringer would have been wiser to file not only a revocation action but
also an application for a DNI before the national court ensuring that the Court must decline
jurisdiction in the infringement action under art.29.
Discussion on the Effect of art.34 UPCA
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There is nothing in the UPCA which states that all designations of a European patent have
to be in issue before the Court. Rather, a claimant can seemingly voluntarily limit the action
before the Court, following which the Court “shall not award more than is requested”. 97
However, this is not, of itself, an answer to whether the decision rendered by the Court shall
cover all designations of European patents in the territory of the Contracting Member States.
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For example, if a potential defendant starts a national action for revocation in one Contracting
Member State it would be possible for the patentee to bring an action for infringement before
Court in relation to a different designation of the same European patent based on the acts of
the defendant in that Contracting Member State. The defendant might then try to revoke that
designation of the European patent in the action before the Court. If, under art.34 UPCA,
the decision of the Court covers all designations of the European patent, that creates
an overlap. Since the causes of action are the same, the Court must decline jurisdiction
in the revocation action. 98
97
98
art.76 UPCA. Further, under art.43, the Court will not impair the freedom of the parties to determine the subject-matter
of their case.
As Paul Torremans puts it, “Matters are not clear and the situation where a ‘competence’ has to come to the rescue of the lis
pendens private international law rules is not ideal”. Torremans P “An International Perspective II: A View from Private
International Law”, in The Unitary EU Patent System, ed. Pila J and Wadlow C (Oxford and Portland, Oregon: Hart Publishing,
2015), p.176.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 93
