UPC found to have jurisdiction to consider infringement in relation to a UK patent
The Unified Patent Court, a centralised court having jurisdiction over infringement and validity of European patents in countries which have signed up to the UPC agreement, has been found to have jurisdiction to consider infringement in relation to a UK patent.
Following Brexit, the UK is not a UPC member country. It is however a member of the European Patent Convention, meaning that European patents granted by the European Patent Office can become UK patent rights. A recent judgement by a Local Division of the UPC has found that the UPC has jurisdiction to decide on infringement of a patent of a non-UPC contracting state (in this case, the UK).
In the recent case (UPC_CFI_355/2023), the patent in issue was a European patent in force in Germany and the UK. The patent proprietor brought an infringement action before the UPC against defendants in Germany (a UPC contracting state) in relation to the German part of the EP patent. The defendants, in turn, brought an invalidity counterclaim and argued that the UPC Local Division did not have the jurisdiction to consider claims relating to non-UPC member states. However, it was found that the UPC is considered a court of a member state (Germany) and therefore that the UPC Local Division was – as a court of a member state of the defendants – able to decide on the case of infringement in relation to both the German and UK parts of the EP patent. The practical effect of this was, however, not realised, since the German part of the EP patent was found to be invalid, and therefore the infringement action failed.
Whether or not the Local Division also has authority to decide on the validity of the UK patent was not formally considered because no invalidity action was bought by the defendants in relation to the UK part of the EP patent.
Whilst the conclusion here concerning the reach of the UPC may seem to extend beyond what might be expected, it nevertheless may prove useful when considering parallel proceedings for infringement and revocation actions involving UPC member and non-member states.
If you would like to discuss this article in more detail, please contact the author or your usual Barker Brettell UPC representative.
