This article was first published in the Journal of the Chartered Institute of Patent Attorneys, who has agreed to Simmons & Simmons making it available on elexica.

The jurisdiction of the Unified Patent Court, within its area of competence, is somewhat broader than might be expected. Complexity arises due to the manner in which amendment of the Brussels Regulation brings the Unified Patent Court into the wider European context and the interplay between the Brussels regulation with the Lugano agreement.

Before addressing the scope of the jurisdiction of the Court, it is useful to consider the manner in which European Patent Convention contracting member states (ie the countries for which European patents might be granted) are members of the various relevant agreements. These relationships are illustrated in the following Figure.

Over half of the EU member states have now ratified the Unified Patent Convention. Germany, the UK and France are required to ratify the agreement in order for the agreement to come into force. So far, of these three countries only France has ratified the agreement. UK ratification is expected late 2017. German ratification has been delayed until the German Federal Constitutional Court reaches a decision on a constitutional challenge to the Unified Patent Convention. Beyond the EU, Norway Switzerland and Iceland are all signatories to the Lugano Convention. Whereas eight further countries, the most significant of which is Turkey, are members of the European Patent Convention without being members of the Lugano Convention or the EU.

Jurisdiction of the Unified Patent Court

The manner in which Unified Patent Court Agreement and the amended Brussels Regulation divide the jurisdiction of the Unified Patent Court depending upon the rights involved and the accession or otherwise of states to the Unified Patent Court Agreement, the EU and the Lugano Convention is summarised in the following table.

In general, as is shown in the table, the jurisdiction of the Unified Patent Court is limited to disputes relating to Unitary Patents and non-opted out European patents and related supplementary protection certificates arising in the UPC contracting member states. However, as there are two exceptions to this.

Damages jurisdiction over infringements occurring outside of the EU

First of all the Court has a limited “long arm” jurisdiction to award damages for acts of infringement of European patents in force outside of the European Union.

In most cases the “long-arm” jurisdiction of the Court will be of limited interest being that it is limited to the assessment of damages and is only available where the jurisdiction of the Court is founded on infringements occurring within the UPC contracting member states. The “long-arm” jurisdiction is further hedged with various qualifications with the requirement that the defendant must have property located within an EU member state, the extra territorial infringement must give rise to damage within the EU and the dispute must have “sufficient” connection with the Member State where property is located. Furthermore as indicated in the table, this “long-arm” jurisdiction is not available in respect of infringement occurring in any of the Lugano member states if the defendant is domiciled in a Lugano member state. The later restriction arises due the provisions within the Brussels regulation which give primacy to the Lugano convention and the fact that the Lugano convention has not been amended to acknowledge the “long-arm” jurisdiction of the Unified Patent Court.

Provisional measures

Secondly, the Unified Patent Court has the power to grant provisional measures for infringement of European patents even where proprietors opt-out of the jurisdiction of the Court or in respect of infringement occurring outside of UPC member states. In principle this is not at unusual as Article 35 of the Brussels Regulation permits actions for provisional measures to be obtained from any EU Court even if another Court has exclusive jurisdiction as to the substance of the matter.

The grant of provisional measures will always be at the discretion of the Court. The circumstance where the Court might be persuaded to grant provisional measures over an opted-out patent or a European patent outside in a non-UPC contracting member state are likely to be highly fact specific.

EU non-UPC contracting states

Potentially, the ability to seek provisional measures in respect of European patents in non-UPC EU contracting member states may be significant. At present many EU countries have yet to ratify the Unified Patent Convention and it is likely that when the UPC does come into effect, many will still fall into this category.

It will remain to be seen the extent to which the Unified Patent Court might be persuaded to grant provisional measures having effects beyond the UPC contracting member states. It is certainly not impossible that the Court might be persuaded to grant interlocutory relief where a European patent has been maintained broadly both in UPC contracting states and beyond or a Unitary Patent has been granted and European patents in non-participating states upon an undertaking to initiate legal proceedings in those non-participating states. Grant of such interlocutory relief is entirely consistent with the ethos behind the Brussels Regulation which permits provisional measures to be granted even though a Court lacks jurisdiction over the substance of a matter. The essence of the Unified Patent Court is that it already has an international jurisdiction and as such it may be possible to persuade the Court to grant relief in circumstances where national Courts would be more reluctant to do so.

Opted out European patents

Article 83 of the UPC provides for a transitional regime which is to apply for the first seven years of the existence of the Unified Patent Court, a period which can if thought appropriate following consultation be extended by a further seven years. During this transitional period, Article 83(3) provides that provided no action has already been brought before the Court, a proprietor of or an applicant for a granted European patent or pending European patent application or the holder of any associated supplementary protection certificate can opt individual patents and applications and associated certificates out of the exclusive competence of the Court.

When it comes to opted out patents, normally a patent proprietor can withdraw an opt-out at any time and doing so would then place a patent firmly within the jurisdiction of the Court. It is, however, possible to foresee circumstances where the Court might be persuaded to grant provisional measures notwithstanding that an opt-out has not been withdrawn.

The first, and probably the most likely scenario, would be where a patent proprietor wishes to take action against an infringer but there is some kind of formal issue regarding the proprietor’s ability to withdraw an opt-out. This could potentially arise if there was some kind of delay in the updating of the opt-out register or in some circumstances where co-ownership of a patent resulted in difficulties or delay in filing a withdrawal request.

Where immediate action to prevent infringement was required and a proprietor undertook to withdraw an opt out as soon as possible, it is possible that the Court might look favourably on a request for preliminary measures despite a patent formally not falling within the remit of the Court.

A second and potentially more interesting scenario would be where a request for preliminary measures was brought based on multiple patents, at least one of which did fall within the jurisdiction of the Court. Such a scenario could arise where, for example, a patent proprietor sought provisional measures based on related patents such as parent patent and an associated divisional patent where one of the patents had been opted out of the jurisdiction of the Court.

Ordinarily, an opt-out can be withdrawn at any time and it would be expected that the Court would normally only be persuaded to exercise its discretion to grant provisional measures upon an undertaking to withdraw an opt-out or to initiate corresponding litigation in the national Courts in due course. However, an exception exists where an opted-out patent has been involved in national proceedings. This gives rise to the possibility that a potential infringer might initiate national invalidity proceedings in an attempt to “pin” an opt-out out patent in the national Courts. In such a scenario, where a related patent falling within the jurisdiction of the Court existed, it is possible that the Court might be persuaded to grant broader provisional relief based on a right which was not formally within the scope of its jurisdiction.