A guide to the UPC and the UP - Flipbook - Page 92
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Art.71b(2)’s second sentence provides that the Court can grant provisional, including protective,
measures even if the courts of a third state have jurisdiction as to the substance of the matter.
This addition is intended to ensure that the Court has similar jurisdiction over defendants
domiciled outside the EU as over those domiciled within the EU (to which art.35 applies) and
it has been advocated 40 that, in a situation similar to that in Solvay v Honeywell, the Court has
jurisdiction to grant preliminary injunctions in all EPC Contracting States. On the other hand,
art.71b(2), particularly the second sentence, has been criticised as giving rise to exorbitant
jurisdiction in the sense that the rules are unfair to defendants because of the lack of
significant connection between the Court and the parties or the dispute. 41
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As to enforcement, the Court has the ability under art.82(4) UPCA to sanction defendants
with a recurring penalty payment levied against the defendants’ assets. Therefore, if a
“foreign” defendant has assets in the Court’s jurisdiction, it would not matter whether
the courts in non-EU EPC Contracting States refuse to recognise and enforce the
Court’s injunction; a penalty levied against those assets for each breach of the
Court’s order would be sufficient to ensure compliance.
“Long-arm” jurisdiction under art.71(b)(3) Brussels I Regulation (recast)
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Art.71(b)(3) states that the Court will have jurisdiction:
“where [the Court] has jurisdiction over a defendant under point 2 42 in a dispute relating to an
infringement of a European patent giving rise to damage within the Union, that court may also
exercise jurisdiction in relation to damage arising outside the Union from such an infringement.
Such jurisdiction may only be established if property belonging to the defendant is located in
any EU Member State party to the instrument establishing [the Court] and the dispute has a
sufficient connection with any such Member State”.
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The intention behind the original proposal which evolved into this provision was to provide
a free-standing asset-based jurisdiction in instances where no court of an EU Member State
had jurisdiction under art.71b(2) Brussels I Regulation (recast). In the travaux préparatoires,
the Commission stated that it would, for example, ensure that the Court would have jurisdiction
vis-à-vis a Turkish defendant infringing a European patent covering several EU Member States
and Turkey. However, the original proposal was rejected by the Council and Parliament in
favour of the present wording.
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Art.71b(3) is stated to be a subsidiary rule of jurisdiction 43 and provides that the Court may
exercise jurisdiction (i.e. it has the discretion to do so) over damage arising outside the EU,
but only where the Court already has jurisdiction over the defendant under art.71b(2).
40
41
42
43
Hoyng W “Cross-border decisions and the UPC” IE-Procesrecht. Constant in beweging [IP Procedural Law.
Constantly in Motion] 2022, pp.90 to 99 at p.96.
Marongiu Buonaiuti F “The agreement establishing a unified patent court and its impact on the Brussels I
Recast Regulation, the new rules introduced under Regulation (EU) 542/2014 in respect of the Unified Patent Court
and the Benelux Court of Justice” Cuadernos de Derecho Transnacional (Marzo 2016), Vol.8, No 1, pp.208–222 at p.218.
art.71b(2) Brussels I Regulation (recast).
Recital 7 Brussels I Regulation (recast).
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 82
