Executive Summary: Long arm jurisdiction at the UPC

With the Unified Patent Court (UPC) getting into its stride, the contours of its approach to jurisdiction are becoming more apparent, especially following the CJEU decision in Electrolux earlier this year. It is fair to say that these contours are broader than what practitioners envisaged at the outset.

The UPC has shown a growing willingness to accept long arm jurisdiction across its multinational divisions, both based on the guidance given in Electrolux and also using UPC-specific provisions. In Fujifilm v Kodak III, the Mannheim Local Division has granted relief (including injunctive relief) against German-based defendants for infringement in the UK.  Similarly, in HL Display, the Hague Local Division has granted relief against a Dutch-based defendant covering all the states in which the patent in suit was in force; including, in addition to UPC member states, Ireland and Spain (non-UPC EU member states), Norway and Switzerland (Lugano Convention states), and Liechtenstein and the UK (third countries). In Dyson v Dreame, the Hamburg Local Division has ordered preliminary injunctions in particular against German-based and Hong-Kong-based respondents for alleged infringement in Spain. Most recently, the Mannheim Local Division has accepted jurisdiction in Hurom v NUC Electronics I over a Korean-based defendant for alleged infringement in Poland, Spain and the UK, before going on to dismiss the infringement action on the merits.

To summarise, the UPC has accepted jurisdiction over:

1. domestic defendants (i.e. those based in UPC territory) for infringement outside UPC territory, including non-UPC EU member states (such as Spain and Poland), Lugano Convention states (such as Norway and Switzerland), and third countries (such as the UK); and
2. non-domestic defendants (i.e. those based outside UPC territory, such as Hong Kong) for infringement outside UPC territory (such as Spain).

Notwithstanding the breadth of the current approach, long arm jurisdiction at the UPC is not a free-for-all and relies on specific circumstances. For example, the first scenario requires that the domestic defendant be directly involved in the infringing acts, rather than for example simply playing a controlling role. The second scenario relies additionally on an “anchor” defendant based within UPC territory and for the claims against the respective defendants to be “closely connected”; or at least some tangible connection to UPC territory.  Furthermore, the scope of the UPC’s jurisdiction is confined, at least for now, only to European patents granted at the EPO.

While the decisions of the UPC Court of First Instance have provided practitioners with useful guidance on long arm jurisdiction, the UPC Court of Appeal has not had the opportunity yet to give its views on the developing scope of the law in this area, with important questions yet to be settled.

Despite the uncertainties, it seems that a broader than previously envisaged view of long arm jurisdiction at the UPC is perhaps here to stay. Therefore, understanding its boundaries and the evolution of those boundaries is of critical importance both to patent holders and potential defendants. In our article, we trace out the development of long arm jurisdiction at the UPC, its current state, as well as the procedural and substantive challenges that remain to be addressed.

Read the full article here.