The extent of the UPC's international jurisdiction is often misunderstood. For example, it is sometimes thought that the UPC cannot handle patent infringement cases occurring in countries that are not Contracting States of the UPC Agreement (e.g., infringement in Spain, Switzerland, or Turkey). We will demonstrate that this interpretation is not always accurate.
Recap on the Unitary Patent and the Unified Patent Court:
The European patent with unitary effect is based on the European patent granted by the European Patent Office (EPO) according to the provisions of the European Patent Convention (EPC). Once the European patent is granted, the holder can request unitary effect, ensuring uniform protection in EU Member States participating in the enhanced cooperation on the unitary patent system and having ratified the UPC Agreement (UPCA). As of now, this includes 18 Contracting States: Germany, Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Romania, Slovenia, and Sweden. The European patent can also be validated in other EPC member states (currently 39).
The Unified Patent Court (UPC) is competent to handle infringement and revocation cases concerning both unitary patents and classic European patents (without unitary effect). During a transitional period extending at least until June 1, 2030, infringement and revocation cases regarding classic European patents may still be brought before national courts of the UPC Agreement’s Contracting States (Article 83 of the UPCA).
After this transitional period, the national courts of the EPC states that are not UPC Agreement Contracting States will remain competent for disputes concerning the national validations of European patents.
Therefore, there is no single European jurisdiction for handling infringement and revocation cases of European patents validated in EPC states. Often, each national part of a European patent will be subject to separate proceedings.
The extent of the UPC’s international jurisdiction is frequently misunderstood. In particular, it is often mistakenly assumed that the UPC cannot address cases of infringement committed in a state that is not a Contracting State of the UPCA.
Legal Framework for Determining International Jurisdiction:
In the European Union (EU), the rules governing international jurisdiction in civil and commercial matters are set out in Regulation (EU) No 1215/2012, also known as the Brussels I bis Regulation.
In the context of the unitary patent system, specific provisions for the UPC were added to this regulation (Articles 71bis to 71quinquies of Regulation (EU) No 542/2014).
The international jurisdiction of the UPC is governed by the Brussels I bis Regulation:
Article 31 of the UPCA:
The international jurisdiction of the Court is established in accordance with Regulation (EU) No 1215/2012...
According to Article 1 of the UPCA and Articles 71bis and 71ter(1) of the Brussels I bis Regulation, the UPC has international jurisdiction for disputes relating to classic European patents and European patents with unitary effect. The UPC functions as a court of each of its Contracting States.
Article 1 of the UPCA:
This Agreement establishes a Unified Patent Court for the resolution of disputes concerning European patents and European patents with unitary effect.
The Unified Patent Court is a common court for the Contracting Member States and is therefore subject to the same obligations under Union law as any national court of the Contracting Member States.
Article 71bis of the Brussels I bis Regulation:
- For the purposes of this Regulation, a court common to several Member States, as specified in paragraph 2 (hereinafter referred to as “common court”), is considered a court of a Member State when, under the instrument establishing it, this common court exercises its jurisdiction in matters within the scope of this Regulation.
- The following courts are considered common courts:
a) the Unified Patent Court...
Article 71ter(1) of the Brussels I bis Regulation:
The common court has jurisdiction where, under this Regulation, the courts of a Member State party to the instrument establishing the common court would have jurisdiction in a matter governed by that instrument.
The subject matter over which the UPC has jurisdiction is limited by Articles 1, 3, and 32 of the UPCA. Notably, the UPC has jurisdiction over matters of infringement and validity of classic European patents, European patents with unitary effect, supplementary protection certificates (SPCs) granted for products protected by such patents, and European patent applications. Conversely, the UPC does not have jurisdiction over matters such as infringement of national patents.
If the defendant is domiciled in an EU state, international jurisdiction is determined under Chapter II of the Brussels I bis Regulation.
Defendant Seized at Their Place of Domicile:
Specifically, Article 4(1) of the Brussels I bis Regulation states that individuals domiciled in an EU Member State may be sued in the courts of that state. For those domiciled in a UPC Agreement Contracting State, Articles 4(1) and 71ter(1) stipulate that the UPC has jurisdiction.
Individuals domiciled in an EU state that is not a UPC Agreement Contracting State (e.g., Spain, Hungary, or Poland) can be sued in the courts of their respective state.
Article 4(1) of the Brussels I bis Regulation:
Subject to this Regulation, individuals domiciled in an EU Member State may be sued, regardless of their nationality, before the courts of that Member State.
The jurisdiction established under Article 4(1) of the Brussels I bis Regulation is general. This means that a court in the defendant’s home country may handle patent infringement disputes in all countries and can grant damages and/or preliminary injunctions for these countries. The same applies to the UPC when acting as a common court for the defendant’s home country.
Example 1: A company A holding a European patent validated in all EPC states may bring company F, a French company, before the UPC for patent infringement acts committed in EPC states (not just in UPC Agreement Contracting States), such as in Spain, Switzerland, or Turkey. In this scenario, the UPC acts as the common court for France (the location of company F’s headquarters).
Defendant Seized at the Place of the Harmful Event:
Article 7(2) of the Brussels I bis Regulation specifies that the courts of an EU state where an infringement (harmful event) occurred are also competent.
Article 7(2) of the Brussels I bis Regulation:
A person domiciled in an EU Member State may be sued in another Member State: […] in tort or delict, before the courts where the harmful event occurred or may occur.
However, the courts of the place where the harm occurs are only competent for the damage caused in that state ("mosaic approach").
Example 2: A company A holding a European patent validated in all EPC states may bring company E, a Spanish company, before the UPC for patent infringement acts committed in UPC Agreement Contracting States (where a harmful event occurred). In this scenario, the UPC could not, however, rule on acts of infringement committed in non-UPCA Contracting States (e.g., in Spain, Switzerland, or Turkey). According to Article 4(1) of the Brussels I bis Regulation, a Spanish court (court of the location of company E’s headquarters) could instead grant damages for all EPC states where an infringement occurred.
Exclusive Jurisdiction on Patent Validity:
Article 24(4) of the Brussels I bis Regulation stipulates that each EU state has exclusive jurisdiction to determine the validity of a European patent granted for its state. This applies even when the validity of the patent is raised as a counterclaim in an infringement procedure.
Article 24(4) of the Brussels I bis Regulation:
The following courts of an EU Member State have exclusive jurisdiction, regardless of the parties' domicile: […]
4) concerning the registration or validity of patents, […] whether the question is raised by action or defense, the courts of the Member State in which the patent application or registration was requested, executed, or deemed to have been executed under Union legislation or international convention.
Thus, in Example 1 above, if company F argues that the patent is invalid, it can file a counterclaim for invalidity before the UPC for UPCA Contracting States. However, F cannot file a counterclaim for invalidity before the UPC for other states (e.g., for Spain). If E initiates an invalidity action regarding the Spanish part of the European patent before a Spanish court, the UPC must suspend the infringement action concerning Spain until the Spanish court issues a final decision on the validity of the Spanish part of the European patent.
Provisional and Protective Measures (Including Preliminary Injunctions):
According to Articles 35 and 71ter(2) of the Brussels I bis Regulation, provisional measures can be granted by an EU state court (including the UPC) even if that court does not have jurisdiction over the substance of the case.
Article 35 of the Brussels I bis Regulation:
Provisional or protective measures provided for under the law of an EU Member State may be sought from the courts of that state, even if the courts of another Member State have jurisdiction over the substance of the matter.
Article 71ter(2) of the Brussels I bis Regulation:
Provisional measures, including protective measures, may be requested from a common court even if the courts of a third state have jurisdiction over the substance of the matter.
In particular, the UPC can grant provisional measures under Article 62 of the UPCA (e.g., an injunction to cease alleged infringement), even for acts of infringement committed in non-UPCA Contracting States (and for which the defendant could file a counterclaim for invalidity as part of the main procedure).
Thus, in Example 1 above, the UPC could grant a preliminary injunction for acts of infringement committed in Spain, Switzerland, or Turkey.
When the Defendant Is Not Domiciled in an EU State:
It is notable that the Brussels I bis Regulation also grants the UPC jurisdiction over a defendant who is not domiciled in an EU state. This may occur for infringement acts committed in UPCA Contracting States (Article 71ter(2)) or, under certain conditions, to award damages resulting from the infringement of a European patent in states outside the EU (Article 71ter(3)).
Article 71ter(2) of the Brussels I bis Regulation:
Where the defendant is not domiciled in an EU Member State, and this Regulation does not otherwise confer jurisdiction over the defendant, Chapter II applies, as appropriate, regardless of the defendant's domicile.
Article 71ter(3) of the Brussels I bis Regulation:
Where a common court has jurisdiction over a defendant under point 2) in a dispute relating to the infringement of a European patent causing harm within the Union, that court may also exercise its jurisdiction over harm caused by that infringement outside the Union.
This jurisdiction can only be established if the defendant's assets are located in a Member State party to the instrument establishing the common court and if the dispute has a sufficient connection with such a Member State.
Conclusion:
The above examples demonstrate that the UPC’s international jurisdiction can extend beyond the territories of the UPCA Contracting States.
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Source: The jurisdiction of European courts in patent disputes – European Patent Academy
