A recent decision of the Paris Local Division of the UPC has confirmed that where a defendant is domiciled in the EU the UPC is competent to decide on infringement for all parts of a European patent. This includes non-UPC states such as Spain and non-EU states such as Switzerland and the UK. In addition, while the Court confirmed that it could not legally revoke a European patent in a ‘third-state’ – such as the UK – it held that it can decide on the validity of the European patent in ‘third-states’ with binding effect for the parties involved in the UPC action.
The case of Mul-T-Lock France & Mul-T-Lock Suisse vs. IMC Creations (UPC_CFI_702/2024) follows swiftly on from the CJEU decision of BSH Hausgeräte v Electrolux that decided, based on the Brussels Regulation, that where a defendant is domiciled in the EU the UPC has jurisdiction to hear actions for infringement in all countries covered by the European patent irrespective of whether the states are party to the UPC or in the EU.
In Mul-T-Lock France & Mul-T-Lock Suisse vs. IMC Creations the Paris Division not only confirmed the approach of BSH Hausgeräte v Electrolux but appears to have gone further in two important respects:
So, the UPCs jurisdiction continues to expand, with the aim it appears of becoming the de facto forum for litigating infringement and validity of European patents for all states – at least where at least one defendant is domiciled in the EU. We will need to wait and see whether future decisions will look to expand the UPCs jurisdiction for non-EU domiciled defendants or to ‘third-states’ not covered by a European patent. It will also be of interest to see what view courts in ‘third-states’ such as the UK take to inter partes validity decisions issued by the UPC. Will, say, the UK courts consider themselves estopped from hearing an action between the same parties, and how much weight will be given by the UK courts to a prior finding of invalidity in a case relating to a different alleged infringer?
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