A guide to the UPC and the UP - Flipbook - Page 91
Jurisdiction over Defendants Domiciled in the Rest of the World (ROW) 33
Jurisdiction under art.71b(2) Brussels I Regulation (recast)
6-25
Without further amendment to the Brussels I Regulation (recast), the Court would not have
had uniform jurisdiction over all patent proceedings relating to non-EU domiciled defendants.
This is because, in relation to defendants not domiciled in an EU Member State, the jurisdiction
of the courts of each EU Member State is, with a few exceptions, 34 determined by the law of
that Member State. 35 As the Court is a court common to a number of EU Member States, it
would be unclear which law the Court should apply. In addition, the travaux préparatoires 36
made it clear that that the amendment to the Brussels I Regulation (recast) was to ensure that
where a defendant is domiciled in ROW, access to the Court would be the same as for a
defendant domiciled in an EU Member State.
6-26
The solution is provided in art.71b(2) which states:
“Where the defendant is not domiciled in a Member State, and this Regulation does
not otherwise confer jurisdiction over him, Chapter II 37 shall apply as appropriate
regardless of the defendant’s domicile.
Application may be made to a common court for provisional, including protective, measures
even if the courts of a third State have jurisdiction as to the substance of the matter”.
6-27
The wording in the first sentence has the effect of removing, where appropriate,
the requirement for domicile in an EU Member State from the whole of Chapter II
of the Brussels I Regulation (recast), that is, from arts 4 to 35. This means that the
special jurisdiction found in art.7(2) (matters relating to tort) and in art.8(1) (joinder of
co- defendants) becomes the basis for the Court’s jurisdiction. In this way, art.71b(2)
introduces jurisdiction based on subject-matter, a concept familiar to patent litigators,
but alien to the Brussels I system. 38
6-28
The application of art.71b(2) and art.7(2) is straightforward and will, in practice, be most
commonly used as the basis for the Court’s jurisdiction over a defendant domiciled in ROW.
For example, the Court will have jurisdiction over a defendant domiciled in Australia (ROW)
if they are infringing a Unitary patent or a European patent granted in France and Italy
(Contracting Member States). Where there is a second defendant domiciled in France,
the actions against the Australian company and the French company can joined together
under art.71b(2) and art.8(1) 39 provided that they each infringe the same European patent
by selling the same product.
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34
35
36
37
38
39
ROW refers to States which are not in the EU and are not Lugano Convention States.
The only exception relevant to patent law is art.24(4) Brussels I Regulation (recast).
art.6(1) Brussels I Regulation (recast).
Proposal for a Regulation of the European Parliament and of the Council amending Regulation (EU) No. 1215/2015 on
jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, Brussels, 26.7.2013, COM
(2013) 554 final, 2013/0268 (COD) at para.3.3.
arts 4 to 35 inclusive Brussels I Regulation (recast).
For commentary on this “shocking” provision see Torremans P “An International Perspective II: A View from
Private International Law”, in The Unitary EU Patent System, ed. Pila J and Wadlow C (Oxford and Portland,
Oregon: Hart Publishing, 2015), p.169. It has also been referred to as “simple and drastic” by Tilmann W “The UPC
Agreement and Unitary Patent Regulation – construction and application” JIPLP 2016, Vol. 11, No. 7, p.545 at p.550.
There remains a requirement that one of the co-defendants is domiciled in a Contracting Member State.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 81
