For businesses operating in Europe, the Unified Patent Court is no longer “just” a regional court for participating EU member states. The CoA has confirmed that the UPC possesses significant international jurisdiction, extending its reach to patent designations in non-UPC countries, such as the United Kingdom.
Why the UPC can rule on your UK or Swiss patents
The Court clarified that Article 34 UPCA does not confine the UPC’s power to its own territory. Instead:
- Domicile is Key: If a defendant is domiciled in a UPC Contracting Member State (e.g., Germany, France, or the Netherlands), the UPC has jurisdiction under Article 4 Br I bis to hear infringement claims for any designation of a European patent, including those in non-member states like the UK.
- The “Common Court” Principle: The UPC is treated as a “common court” under European law, meaning it can exercise the same extra-territorial jurisdiction that a national court would have over a locally domiciled defendant.
Handling the validity defence abroad
One of the biggest concerns for clients is whether the UPC can “kill” a patent in a non-UPC country. The CoA established a nuanced framework:
- EU/Lugano States: For designations in EU members not in the UPC or Lugano Convention states (e.g., Switzerland), the UPC cannot rule on validity but can still decide on infringement.
- Other Non-EU States (e.g., UK): For these territories, the UPC can consider validity as a defence within the specific litigation (inter partes). While it won’t strike the patent from the national register, it can deny an infringement claim if it finds the patent invalid.
- The “Condition Subsequent” Injunction: If the UPC finds a foreign designation infringed and valid, it may issue an injunction subject to a “condition subsequent.” This means the UPC’s order remains in place unless and until a competent national court (like the UK High Court) declares the patent invalid.
Strategic practical tips for clients
From a client perspective, this decision necessitates a review of both enforcement and defense playbooks:
- Centralized Enforcement (The “One-Stop-Shop”): You can now potentially sue a European competitor for infringement across the UPC territory and the UK in a single UPC action. This significantly reduces costs and prevents conflicting national rulings.
- The “Title Transfer” Trap: In this specific case, the infringement claim for the UK failed because title to the goods did not pass in the UK. The German manufacturer (Kodak) produced goods for a UK entity that retained legal title during import. Tip: If you are a patentee, ensure you can prove the defendant has a “legal and beneficial interest” in the goods at the moment of import into the foreign jurisdiction.
- Prior Use Rights are National Shields: Prior use rights (the right to keep using an invention you developed before the patent was filed) remain governed by national law. Tip: Under German law (applied here), a prior user can even modify their product without losing their right, as long as the modification doesn’t realize a “new advantage” specifically disclosed in the patent. Document your R&D history meticulously to preserve this defence.
- Supply Chain Liability (Joint Tortfeasorship): The UPC’s jurisdiction extends to accessories and joint tortfeasors. Even if you don’t personally carry out the infringing act, you could be liable if you act pursuant to a “common design” with an infringer. Tip: Audit your toll manufacturing and distribution agreements to assess potential “common design” exposure in cross-border scenarios.
Conclusion: The UPC has officially flexed its muscles as a global forum. Whether you are protecting your market or defending your products, your strategy must now account for the UPC’s ability to reach across borders into non-member states.