A guide to the UPC and the UP - Flipbook - Page 93
6-34
However, it has also been referred to as “an entirely new “long-arm” jurisdiction”. 44 There is
good reason for saying so in that, if the Court’s jurisdiction is based purely on art.71b(2) and
art.7(2), it does not have any basis to decide the issue of infringement of a European patent
outside the Contracting Member States. For example, if a defendant domiciled in Japan (ROW)
is selling products infringing a European patent in several Contracting Member States, Norway
(a Lugano Convention State) and Turkey (a non-EU EPC Contracting State), the Court would,
absent art.71b(3), only have jurisdiction over the infringing acts in the Contracting Member
States under art.71b(2) and would not have jurisdiction over the infringements in Norway
or Turkey. Under art.71b(3), and provided the conditions in the second sentence are fulfilled, 45
the Court has jurisdiction over the issue of damage caused by the infringement of a European
patent in those countries. There is no need to rely on art.8(1) Brussels I Regulation (recast).
6-35
It should be noted that there is no requirement that the “damage arising outside the Union
from such infringement” is as a result of the infringement committed within the Union.
Rather, it is as a result of an infringement committed outside the territory of the Union. 46
Thus the Court’s jurisdiction is extended to the non-EU EPC Contracting States including
the Lugano Convention States 47 where the European patent is infringed. In relation to the
Lugano Convention States, the Court must decline jurisdiction if validity of the European
Patent is put in issue under art.22(4) Lugano Convention. It is submitted that the Court
should do the same in relation to the other non-EU EPC Contracting States following the
policy reasons in GAT v LuK 48 or, at least in the event of a pending invalidity action in the
non- EU EPC Contracting State, stay the proceedings under art.34 Brussels I Regulation (recast).
However, it might be said that since art.71b(3) relates purely to issues of damage it does not
impinge upon the validity of the patent at issue.
6-36
It has been pointed out that art.71b(3) derogates from the “mosaic approach” under
art.7(2) i.e. when the jurisdiction of a court of an EU Member State is based on the place
where the damage occurred, the court seized only has jurisdiction over the damage caused
in that territory. 49 In doing so, art.71b(3) differs from the Litigation Protocol annexed to
the CPC, 50 the EU Trade Mark Regulation 51 and the Community Design Regulation 52 all of
which clearly state that a court having jurisdiction on the basis of an act of infringement
committed in the forum of that EU Member State has no jurisdiction in relation to
separate acts of infringement committed in other EU Member States.
6-37
Although art.71b(3) refers to “damage”, the action contemplated appears not to be limited to an
action for damages and would encompass injunctive relief to prevent continuing damage in an
action on the merits. It would also appear to extend to the grant of preliminary injunctions by
reference back to art.71b(2) second sentence.
44
45
46
47
48
49
50
51
52
Véron P “Extent of the long-arm jurisdiction conferred upon the Unified Patent Court by art.71b(3) of the Brussels I Regulation
as amended by Regulation 542/2014 of May 15, 2014: Turkish delight and a bit of Swiss chocolate for the Unified Patent
Court” EIPR, 2015, 37(9) pp.588 to 596 at p.595.
See paragraph 6-38.
See also recital 7 Regulation (EU) No. 542/2014 which states that the proceedings relate “to an infringement of a European
patent giving rise to damage both inside and outside the Union.”
The Lugano Convention does not prejudice the application by EU Member States of any amendments to the Brussels I
Regulation (recast) (art.64 Lugano Convention). Therefore, although art.71b(2) Brussels I Regulation (recast) does not apply to
defendants domiciled in Iceland, Norway and Switzerland, it nevertheless applies to defendants domiciled in third countries
infringing a European patent granted in those countries.
See paragraph 6-12.
Prof. Ohly A “The jurisdiction of European courts in patent disputes” EPO (2022) para.61
https://www.epo.org/learning/materials/jurisdiction.html [Accessed 1 April 2023].
art.17(2) Protocol on the settlement of litigation concerning the infringement and validity of Community patents
(OJ No. L 401, 30.12.89, p.34).
art.94(2) Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Council
Regulation (EC) No. 207/2009 on the Community trade mark (OJ No. L 341, 24.12.2015, p.21).
art.83(2) Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community designs (OJ No. L 3, 5.1.2002, p.1).
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A Guide to the UPC and the UP 83
