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UPC stretches its ‘long arms’
A recent decision from the Düsseldorf Division of the Unified Patent Court (UPC) has held that the Unified Patent Court has ‘long arm’ jurisdiction to hear an infringement action in respect of a United Kingdom part of a European where the defendant is domiciled in a Contracting Member State, for example Germany. This is despite the United Kingdom being outside the EU and not a Contracting Member State of the UPC.
Before the commencement of the UPC, there was considerable debate as to how wide the UPC would consider their jurisdiction. Could the UPC have a ‘long arm’ jurisdiction where the effects of its judgements would impact parties in countries that had not signed up to the Court or even in countries outside the EU?
The explicit intention of the UPC was to create a single, unified patents court for EU Member States that signed up to the system. However, it has to date been unclear whether the Court would give rulings that have a substantial effect outside of those States.
The present case related to a dispute between Fujifilm and three German divisions of Kodak. The European patent in question, EP 3 594 009 B1, was only in force in Germany and the UK. Fujifilm claimed for infringement in both Germany and the UK. Kodak responded by claiming invalidity of the German part of the European patent.
The UPC, relying on the Brussels Convention, considered themselves competent to decide on infringement in the UK and this had the benefit that, “jurisdiction is therefore predictable and certain for the patent holder.”
The Court did concede that they were not able to consider invalidity of the UK part of the European patent, stating “the UPC has no jurisdiction to rule on the validity of the UK part of the patent in suit” and “certainly cannot revoke” the UK part.
In the end the UK infringement issue was rendered largely moot, since the Court held the German part of patent to be invalid and saw no reason why this would be any different in the UK. On that basis they considered a conviction for patent infringement in the United Kingdom not to be an option in the case at hand.
This case highlights that the jurisdiction of the UPC is very wide ranging – extending to all European patents (unless opted out) and potentially having territorial effect throughout all states of the European Patent Convention, irrespective of whether they are EU Member States or signatories to the UPC Agreement. This issue seems certain to be considered by the UPCs Court of Appeal at some point, even if not on this case.
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