A guide to the UPC and the UP - Flipbook - Page 213
European patents granted in all Contracting Member States should be revoked and that a DNI
should be granted in relation to all such patents for its product (being the same product as is
claimed to infringe in the national action). 9 In such a scenario, the Court has to decline
jurisdiction in relation to the action for a DNI over the European patent in the Contracting
Member State where the first proceedings were filed on the basis of lis pendens. 10
12-08 The Court will also have to decline jurisdiction if, in relation to a European patent (which has not
been opted out), an action for revocation is started in a national court of a Contracting Member
State X by one party and, later, that party commences a revocation action before the Court for
all designations of the same European patent. Both the national court and the Court have
concurrent jurisdiction over the issue of validity 11 of the European patent granted in
Contracting Member State X and the Court, being seized second, must decline jurisdiction to
that extent. 12
12-09 Situations where there are existing related actions before national courts and the Court may
give rise to a claim to stay the proceedings before the Court. 13 However, such situations are
unlikely to provide a basis for a preliminary objection, despite the fact that it would be most
effective if parties could address these issues from the outset of the proceedings i.e. in limine
litis, because it cannot be said that there is an “absence of jurisdiction” as required by r.19(1)(a)
RoP. It seems that the defendant is expected to raise the issue in the SoD and apply to the
Court for a stay under r.295(l) RoP.
12-10 A preliminary objection can also be based on the absence of competence of the Court.
The0matters for which the Court has exclusive competence are set out in art.32(1) UPCA
and include infringement and revocation actions and actions for DNIs. National courts have
retained competence for matters not listed in art.32(1) UPCA, for example, entitlement actions
and actions over patent licences will be heard by national courts.
12-11 Another example of an objection that could be raised at this stage and one that is specifically
mentioned in r.19(1)(a) RoP, is an action before the Court relating to a patent in suit which has
been opted out pursuant to r.5 RoP. In such a case, the Court does not have jurisdiction over
the patent, and the national courts of the Contracting Member States do. 14
The Lack of Competence of the Division Indicated by the Claimant (r.19(1)(b) RoP)
12-12 An action brought before the wrong division of the Court may also be challenged by way of
preliminary objection. The SoC should identify the Court division which will hear the action,
either with an explanation of why that division has competence under art.33 UPCA or by
submitting evidence that the parties have an agreement on the appropriate division in
accordance with art.33(7) UPCA. 15 An infringement action indicating a certain local division
could be challenged, for example, when an action between the same parties relating to the
same patent is already pending in another local division of the Court, since the division first
seized shall be competent for the whole case and any division seized later must declare the
action inadmissible. 16 Further, a revocation action or an action for a DNI should be brought
before the central division, unless an action for infringement between the same parties relating
9
10
11
12
13
14
15
16
The CJEU has held that an action for infringement and an action for a DNI are the same cause of action (Folien Fischer v
Ritrama (C-133/11) ECLI:EU:C:2012:664).
arts.31(1) and 71c(2) Brussels I Regulation (recast). This and the example in the next paragraph assume that art.34 UPCA does
not require an action before the Court to involve all designations of the European patent granted in Contracting Member
States. For a discussion on this point, see chapter 6 (Jurisdiction Competence and Forum Shopping) paragraphs 6-62 to 6-75.
art.83(1) UPCA and art.24(4) Brussels I Regulation (recast).
arts.31(1) and 71C(2) Brussels I Regulation (recast).
art.30 Brussels I Regulation (recast).
For further discussion see chapter 8 (Transitional Provisions (Including Opt-outs and Opt-ins)) paragraphs 8-47 to 8-49.
r.13(1)(i) RoP.
art.33(2) UPCA.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 203
