“Long-arm” jurisdiction of the Unified Patent Court – a court for all of Europe?

The Unified Patent Court (UPC) provides a court system shared between, currently, 18 EU member states. Conversely, European patents are granted by the European Patent Office (EPO) and can cover not only EU member states but other European nations. UPC contracting states at present include France, Germany and Italy, but do not include other EU states such as Spain and Poland and non-EU EPO states such as the United Kingdom and Norway. As such, the UPC in general provides a partially unified forum in which European patents may be litigated.

However, there are circumstances in which the UPC may rule on issues outside of its “borders”, and a recent decision in ongoing litigation between Fujifilm and Kodak has illustrated the point. In this case, the Düsseldorf local division of the UPC has confirmed that if a defendant is domiciled in a UPC Contracting member state (here, Kodak entities domiciled in Germany), then the UPC can in principle assume jurisdiction for infringement actions covering non-UPC states in which the European patent at issue is in force.  The judgment is important since it confirms the “long-arm” jurisdiction of the UPC. In the court’s view, this conclusion follows from the provisions of the Brussels regulation which governs cross-border jurisdictional questions for EU courts.

This does not in itself establish a one-stop shop to handle all European patent litigation, even for suitably domiciled defendants: this jurisdictional reach is tied to questions of infringement, but it is often the case that validity of a patent is questioned in parallel with any infringement action. In general, validity issues remain the preserve of courts in the territories in which the patent is in force (so the UK courts for the UK part of a European patent, for example). In the instant case, while the defendant, Kodak, had challenged the validity of the European patent in Germany at the UPC, it appears there was no explicit challenge to the validity of the patent in the UK. With this in mind, the Court felt comfortable assuming jurisdiction for infringement in both the UK and Germany – whether this would have been the case had a corresponding UK validity challenge been in place remains an open question.

To further complicate the picture, even though the UPC on this occasion accepted no jurisdiction over validity in the UK validity ultimately appears to have been a decisive issue in the decision on infringement. In particular, having found the patent invalid in Germany and therefore dismissing the possibility of infringement there, the Court found it impossible to conclude differently for the UK (noting in particular that no convincing reason to expect a different conclusion on validity had been provided). Moreover, the Court did not find it necessary or appropriate to adopt alternative approaches to handling the UK issues suggested by the claimant, such as a stay awaiting a decision on validity from the UK courts, or a provisional conclusion on infringement subject to any later UK court decision on validity.

As ever, significant issues here turned on the particular facts, and, moreover, this first instance decision may be subject to appeal. Nevertheless, a key milestone has been reached, with the UPC showing willingness to extend its long arm to the UK when the circumstances are right. The full impact of this will be seen in the years to come, but for now it only serves to underline the growing importance of the UPC.

For more information, please contact your usual Venner Shipley attorney or email us at upc@vennershipley.co.uk.