A guide to the UPC and the UP - Flipbook - Page 87
(i)
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Actions concerning decisions of the EPO in carrying out the administrative
tasks referred to in art.9 Unitary Patent Regulation.
This splitting of responsibilities between the Court and national courts could lead
to the fragmentation of cases if elements such as the following are included:
–
Actions over patent licence agreements, 14 unless the parties have
agreed that the Court has jurisdiction; 15
–
Actions relating to patent entitlement and inventorship;
–
Actions arising from art.7 Unitary Patent Regulation
(treating a Unitary patent as an object of property);
–
Actions in unfair competition arising out of unjustified threats of patent proceedings; and
–
Actions for employee inventor compensation.
In some such cases, actions before the Court and the national court may be considered
related and, consequently, the court that is second seized of the action may stay its
proceedings under art.30 Brussels I Regulation (recast), but such matters will have to
be dealt with on an individual basis.
Court’s jurisdiction over defendants domiciled in the EU
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The Court, as a common court to the Contracting Member States, has jurisdiction where,
under Brussels I Regulation (recast), a court of a Contracting Member State would have
jurisdiction in a matter governed by the UPCA. In relation to defendants domiciled in
EU Member States, the Court will therefore apply the rules in the Brussels I Regulation
(recast) in a familiar manner.
Defendants domiciled in Contracting Member States 16
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Where a defendant is domiciled in a Contracting Member State, the Court will have,
under art.4 Brussels I Regulation (recast), wide ranging, general jurisdiction in matters
governed by the UPCA, subject to the rules on exclusive jurisdiction contained in art.24(4)
and prorogation of jurisdiction under art.25. Thus, in relation to such a defendant, the Court
not only has jurisdiction to grant an injunction to stop infringement of a Unitary or European
patent in Contracting Member States, it also has, subject to the Brussels I Regulation (recast)
and the Lugano Convention, jurisdiction to grant cross-border relief in relation to infringement
of European patents granted in other EPC Contracting States as the definition in the UPCA of
European patent is not limited to those granted in Contracting Member States. 17
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However, in relation to those European patents granted in non-Contracting EU Member States,
such cross-border jurisdiction falls away as soon as invalidity of the patent is raised, whether
by way of an action or as a defence, because of the application of art.24(4) which states that
the court of the EU Member State in which a patent is registered has the exclusive jurisdiction
to determine the issue of validity. This was confirmed in the decision of the CJEU in Gesellschaft
für Antriebstechnik mbH & Co. KG v Lamellen und Kupplungsbau Beteiligungs KG 18 (GAT v LuK).
The same applies to patents granted in Lugano Convention States as art.22(4) Lugano
Convention is similarly worded to art.24(4). However, in relation to EPC Contracting States
14
15
16
17
18
Other than actions for compensation under art.8 Unitary Patent Regulation relating to licences of right (art.32(1)(h) UPCA).
art.25 Brussels I Regulation (recast).
At the date of writing 17 Member States, namely Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy,
Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden.
There has been speculation that this was the reason behind the late change to r.5 RoP on opt-outs to provide that all
European patents, not just those in Contracting Member States, have to be opted out.
(C-4/03) [2006] ECR I-06509.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 77
