In its recently published decision, the Unified Patent Court (UPC) assumes long-arm jurisdiction for patent infringement in the United Kingdom if the defendant is domiciled in a UPC contracting member state. Plaintiffs can now consider enforcing, for example, not only the German and French part of a European patent against a domestic defendant but also parts validated even in non-EU states such as the United Kingdom.
The United Patent Court (UPC) is a common patent court of 18 participating EU states (contracting member states) including Germany, France, Italy, and the Benelux, which jointly represent above 80% of the GDP of the European Union. It aims at facilitating patent enforcement in Europe.
A European patent (EP) granted by the European Patent Office (EPO) can be validated for up to 39 countries (EPO member states), including all EU states, the United Kingdom, Switzerland, etc., in a single patent granting procedure. Before the UPC started operating in June 2023, a patentee enforcing an EP had to file suit in each jurisdiction where relief was sought. Now with the UPC, the patentee can assert claims for injunctive relief and damages regarding all contracting member states where the EP is validated within a single litigation.
In a decision on 28 January 2025, the UPC Local Division of Düsseldorf further extended this territorial scope. The court assumes jurisdiction to hear an infringement action also with regard to infringing acts that happen in the United Kingdom (which is not a UPC contracting member state) if the defendant is domiciled in a contracting member state (here, Germany). The decision will be applicable to other countries that are not part of the UPC but in which an EP is validated.
The UPC derives its jurisdiction from Art. 4 (1) of the Brussels Ibis Regulation, according to which persons domiciled in a EU member state (here, Germany) shall be sued in the courts of that member state (here, the UPC, see Art. 71a Brussels Ibis Regulation). As to the applicability of the Brussels Ibis Regulation, the UPC refers to the decision Owusu (ECJ, 1.3.2005 – C-281/02, cf. 34 f.), where the European Court of Justice (ECJ) notes with respect to Art. 4 Brussels Ibis Regulation (former Art. 2 of the Brussels Convention) that the uniform rules of jurisdiction contained in the Brussels Convention are not intended to apply only to situations in which there is a real and sufficient link with the functioning of the internal market, which by definition involves a number of EU states.
Instead, Art. 2 of the Brussels Convention applies to circumstances involving relations between the courts of a single EU state and those of a non-EU state. Therefore, the ECJ has accepted that the international element required for the application of the Brussels Ibis Regulation may not only be intra-EU.
In summary, that provision enables the patent holder to bring all of his or her infringement claims before a single court and to obtain a comprehensive relief from a single forum (ECJ, 1.3.2005 – C-281/02, cf. 31).
In light of the above, patent litigation before the UPC will become even more attractive if parallel litigation in other jurisdictions can be avoided. However, this case was special in that the validity of the UK part of the EP was not challenged. It remains to be seen how the UPC would have ruled if there had been such an invalidity defense in the United Kingdom. For an intra-EU case, Art. 24 (4) of the Brussels Ibis Regulation would give the court in which validity is challenged exclusive jurisdiction over validity, so that no other court could issue a final injunction against infringement as long as validity had not been decided.
For the present case, where the EP part of a non-EU state is concerned, so that Article 24 of the Brussels Ibis Regulation does not apply, the question arises whether Article 24 is a codification of customary international law based on the sovereignty of states, so that the same rules would apply to injunctions with effect in non-EU member states. An answer to this question may be provided by the ECJ in the currently pending case C-339/22.
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