A guide to the UPC and the UP - Flipbook - Page 85
Introduction
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The Court is established to settle disputes relating to European and Unitary patents and
related SPCs. It is a court common to the Contracting Member States and is part of their
judicial systems. Subject to the transitional provisions, the Court has exclusive competence
in relation to an exhaustive list of actions, including infringement and revocation actions,
amongst others, whilst the national courts of Contracting Member States remain competent
for all other actions.
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The international jurisdiction of the Court is established under the Brussels I Regulation
(recast) or, where applicable, the Lugano Convention. The Brussels I Regulation (recast) was
amended by Regulation (EU) No. 542/2014 in a manner which is not always easy to interpret
and will, no doubt, be the subject of early decisions of the Court and possibly referrals to
the CJEU. In relation to actions over European and Unitary patents, it extends the rules in the
Brussels I Regulation (recast) to proceedings against defendants regardless of their domicile
and in a manner that some commentators have called exorbitant. It also amends the rules on
lis pendens and related actions aimed at preventing parallel proceedings and irreconcilable
judgments between the Court and national courts of Contracting Member States during
the transitional period. Despite this, forum shopping between the Court and national courts
in relation to European patents which have not been opted out of the UPC system will
inevitably be a feature of the transitional period.
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Separate from the rules on jurisdiction, the UPCA contains a detailed set of rules setting
out where, as between the different divisions of the Court, an action can be brought.
Where infringement is widespread, the rules allow for a considerable amount of choice
for the claimant as to the division in which it can start the action. Deciding on which division
to choose may be dependent on a number of factors including what has been referred to as
the “couleur locale”. The defendant, in contrast, is not able to dictate the division which will
hear the action.
International Jurisdiction of the Court
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The UPCA does not lay down its own rules on international jurisdiction. Instead, the
international jurisdiction of the Court is established in accordance with the Brussels I
Regulation (recast) or, where applicable, the Lugano Convention. 1 During the drafting of
the UPCA, the European Commission advised that, without amendment, the application
of the Brussels I Regulation (recast) in relation to non-Contracting EU Member States 2 could
give rise to legal challenges. 3 The UPCA therefore made it a requirement that before it could
enter into force, the Brussels I Regulation (recast) had to be amended in order to regulate
the relationship between the two instruments. 4 The Brussels I Regulation (recast) was duly
amended, or rather supplemented, by implementing Regulation (EU) No. 542/2014 5 which
inserted arts 71a to 71d into the Brussels I Regulation (recast). However, the amendments
go further than simply addressing the situation of non-Contracting EU Member States.
art.31 UPCA. The Lugano Convention extends the principles laid down in the Brussels I Regulation (EC) No. 44/2001 to
Denmark, Iceland, Norway and Switzerland. Denmark has since implemented both Brussels I Regulation (recast) and
Regulation (EU) No. 542/2014. Thus, the Brussels I Regulation (recast) now applies to relations between the EU and
Denmark, and the Lugano Convention is relevant to Iceland, Norway and Switzerland.
For clarity in this chapter, Member States are referred to as EU Member States.
“Relationship of the draft agreement on the Unified Patent Court with Regulation (EC) No 44/2001 Brussels I – Non-paper
from the Commission services (30 November 2011)” annexed to 17407/11 PI 166 COUR 74
https://data.consilium.europa.eu/doc/document/ST-17407-2011-INIT/en/pdf [Accessed 1 April 2023].
art.89(1) UPCA.
Regulation (EU) No. 542/2014 of the European Parliament and of the Council of 15 May 2014 amending Regulation (EU) No.
1215/2012 as regards the rules to be applied with respect to the Unified Patent Court and the Benelux Court of Justice (OJ No.
L 163, 29.5.2014, p.1). The amendments apply from 10 January 2015.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 75
