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Which National Law Applies to Non-contractual Issues?
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When considering which national law to apply, the Court must firstly have regard to directly
applicable provisions of EU law containing private international law rules. 103 Art.8 Rome II is
relevant in this respect as it sets out the law applicable in the case of non-contractual
obligations arising from the infringement of intellectual property rights, both national and
unitary Community rights.
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For European patents the national law which will be applied to fill the gaps where EU law, the
UPCA and EPC do not apply, will be that of the Contracting Member State where protection is
sought. 104 Complications in applying this rule, however, will arise if the infringing act has been
committed in a number of jurisdictions all of which are before the Court. If the application of
one national law is not possible, the Court will have to apply national law on a country-bycountry basis.
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How the Court will resolve the potential discrepancies between national laws in this regard
remains to be seen but the Court will need always to bear in mind the overriding principle in the
UPCA of providing for harmonisation of the application of patent laws in the Contracting
Member States as regards patents within the jurisdiction of the Court. As a solution, it has been
suggested that the law of the Contracting Member State where the defendant is domiciled
would be the most appropriate or where a focus of the activity can be localised or which
otherwise has the closest connection to the infringing activity. 105 This suggestion mirrors the
scheme in the Brussels I Regulation (recast); the general rule being that courts of the Member
State of the defendant’s domicile have jurisdiction 106 or, under the rules on special jurisdiction,
the courts of the Member State where the harmful event occurred or may occur. 107
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For Unitary patents the first issue is whether a Unitary patent is a “unitary Community
intellectual property right”. 108 The Unitary patent is a creature of the Unitary Patent Regulation
and is considered a unitary right despite the fact that it does not cover the whole of the EU,
and never will if Spain and Poland maintain their opposition to joining the Unitary Patent
Package. Thus, the national law which will be applied to fill the gaps where EU law, the UPCA
and EPC do not apply will be that of the country in which the act of infringement was
committed. 109 Again, complications arise in identifying the relevant national law if there are
multiple acts of infringement, but the solution suggested in the above paragraph would go
to resolving such a problem.
Liability as a Joint Infringer
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103
104
105
106
107
108
109
As there is nothing in arts 25 to 27 UPCA on the issue of the liability of joint tortfeasors,
instigators and accessories and vicarious agents to the act of infringement, the Court will
have to apply Rome II when considering the relevant national law on such issues. For example,
in Germany reference is made to such liability in ss.830 and 831 of the German Civil Code.
art.24(2)(a) UPCA.
art.8(1) Rome II. This effectively will mean where the European patent is registered and purportedly infringed. It is consistent
with arts 2(2), 64(1) and 64(3) EPC.
Hoffmann Eitle “The EU Patent Package Handbook, A Practitioner’s Guide” (Munich: Hoffmann Eitle, 2014), p.118.
art.4(1) Brussels I Regulation (recast).
The CJEU has held that the expression “place where the harmful event occurred or may occur” is intended to cover both the
place where the damage occurred and the place of the event giving rise to it Fiona Shevill v Presse Alliance SA (C-68/93) [1995]
ECR I-00415 [20].
art.8(2) Rome II.
art.8(2) Rome II.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 119
