A guide to the UPC and the UP - Flipbook - Page 89
Defendants domiciled in the EU but not in a Contracting Member State 26
6-16
Where a defendant is domiciled in an EU Member State that is not a Contracting Member State,
a number of rules in the Brussels I Regulation (recast) give the Court jurisdiction. The first of
these is art.7(2) which provides that proceedings can be brought before the Court “in matters
relating to tort [i.e. patent infringement] … where the harmful event occurred or may occur”
in any one of the Contracting Member States. Thus, a defendant based in, for example, Poland
(in the EU, but not a Contracting Member State) may be sued before the Court for infringement
of a Unitary patent or a European patent granted in a number of Contracting Member States.
6-17
Further, art.8(1) Brussels I Regulation (recast) provides that where a person, domiciled in an
EU Member State, is one of a number of defendants, such a person can be sued in the courts
of the place where any one of them is domiciled. Therefore, if one defendant is domiciled in a
Contracting Member State (sometimes called the anchor defendant), other defendants may be
joined to the action provided that the claims against each of the defendants must be “so closely
connected that it is expedient to hear and determine them together to avoid irreconcilable
judgments resulting from separate proceedings”.
6-18
In the case of Roche Nederland BV & others v Frederick Primus & another, 27 the CJEU took a strict
approach to defendants operating in different EU Member States, holding that the details of the
patent infringement were different in each EU Member State and therefore there was no risk of
irreconcilable judgments. In doing so, it killed what was referred to as the “spider in the web”
doctrine by which a claimant pursued multiple patent infringement actions against foreign
companies by joining them with a local company before a single court. Therefore, a claimant
is required to pursue separate actions against each defendant in their national court.
6-19
The strict rule laid down in Roche v Primus was considered six years later in the Solvay v
Honeywell case. 28 Solvay applied for a preliminary injunction against three Honeywell
companies, two domiciled in Belgium and one in the Netherlands. It was alleged that
all three companies were active in a number of countries where European patents were
granted with their activities overlapping. It was argued that unless the Dutch court could
seize jurisdiction over the Belgian companies under art.8(1), there would be a risk of
contradictory judgments since the Dutch court could find that the activities of the Dutch
company in Finland (the example the CJEU used) would be infringing, whereas the Belgian
court could find that the same activities of the Belgian companies in Finland would not. In
the result, the CJEU followed Roche v Primus, but distinguished it on the facts finding that a
court could have jurisdiction over co-defendants provided that they each infringed, in relation
to the same product, the same national parts of the European patent. Thus, where the Dutch
court had cross-border jurisdiction over the Dutch defendant because of its domicile, the
Belgian companies could be involved as co-defendants.
6-20
If the Court were to follow such a line, it would extend the Court’s reach in preliminary
injunction cases to co-defendants from non-Contracting EU Member States brought into the
proceedings under art.8(1) where they are each alleged to commit the same infringement using
the same product and the infringement adversely affects the same European patent as their
co- defendant based in a Contracting Member State. Furthermore, since the anchor defendant
is domiciled in a Contracting Member State, the relief the Court can grant will, as noted in the
above section, extend to all EPC Contracting Member States.
26
27
28
This comprises at the time of writing those seven Member States which have signed but not ratified the UPCA,
being Cyprus, Czechia, Greece, Hungary, Ireland, Romania and Slovakia and the three Member States which have
not signed the UPCA, being Croatia, Poland and Spain.
(C-539/03) [2006] ECR I-6535.
(C-616/10) ECLI:EU:C:2012:445. See also paragraph 6-14.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 79
