A guide to the UPC and the UP - Flipbook - Page 104
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There will be specific situations where it does not make sense for the decision of the Court to
have such uniform effect, for example, where the different designations of European patents
have different claim sets or where the application of national law on prior use of the invention
provided for in art.28 UPCA results in different decisions on validity over some designations
of the European patent 99 or indeed, where there are multiple proprietors. As to this last point,
it would be strange if all the proprietors of all designations had to act in unison to commence
or defend proceedings before the Court. In these specific situations, the Court should be
flexible enough not to insist that the European patent be treated as a unitary whole under the
unifying rule in art.34 UPCA. 100 But if exceptions are made for these situations, why not others
including the voluntary carving out of issues by the parties?
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The questions raised by art.34 UPCA require analysis, not only of the language, but of
policy considerations. 101 The French and German language versions of the UPCA arguably
do not use the same imperative wording (“shall cover”) that the English version uses 102 and
may point to the possibility to carve out different designations of a European patent. But if
that is right, it would allow a number of national actions and a Court action to proceed at the
same time. Where much effort was put into the rules on opting out 103 to ensure that forum
shopping was consigned to opted out patents, it would seem odd for it to remain very much
alive in relation to non-opted out patents. 104 However, such policy considerations have to
be considered in the light of the compromise that underpins art.83 UPCA.
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This is yet another area which needs to be clarified by the Court and, as it also relates
to the jurisdiction of national courts, it will entail a referral to the CJEU.
“Division Shopping”
Introduction
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The discussion of forum shopping, or rather shopping between divisions of the Court, might at
first seem out of place in relation to a system which provides for a single Unitary patent and a
single Court primarily applying unified law.
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However, the competency rules in art.33(1) UPCA allow the patentee, where the infringement
is widespread, a considerable amount of freedom to determine in which division it may bring
an action. In contrast, the filing of a torpedo action in a division chosen by the potential
defendant has been deliberately excluded 105 and the claimant remains largely in control
even when a revocation action is first filed. 106
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100
101
102
103
104
105
106
The art.28 UPCA point also applies to Unitary patents.
The analogy has been drawn between art.34 UPCA and the effect of decisions made in relation to EU trade marks which have
effect throughout the EU. Following the CJEU’s decisions in DHL Express France SAS v Chronopost (C-235/09) ECLI:EU:C:2011:238
and combit Software GmbH v Commit Business Solutions Ltd (C-223/15) ECLI:EU:C:2016:719, a decision of an EU trade mark court
only had effect insofar as the use of an alleged infringing sign affects the function of the that trade mark. Thus, if linguistic
differences render the function of an EU trade mark unaffected in part of the territory of the EU, the decision of an EU trade
mark court does not extend to that part of the territory.
Johnson A “Unified Patent Court” in “The Patent Litigation Law Review” 3rd edn, ed. Cook T, (Great Britain: Law Business
Research Ltd, 2019), pp.7-17 at p.10.
Respectively “couvrent” and “gelten … hat”.
r.5 RoP.
Johnson A “Unified Patent Court” in “The Patent Litigation Law Review” 3rd edn, pp.7-17 at p.11.
art.33(6) UPCA.
art.33(5) UPCA.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 94
