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Rule 274 of the Rules of Procedure of the Unified Patent Court (UPC) specifies the methods for serving a statement of claim to a defendant domiciled outside the Member States of the UPC. Additionally, Rule 275.1 provides that, where the service of a statement of claim fails, the court may, upon request and if there is a valid reason, authorize service by another method or at another location.

The decision UPC_CFI_332/2024 provides clarifications on the grounds for ruling on such a request under Rule 275.1 where the defendant is domiciled outside the Member States of the UPC.
In this case, the claimant initiated a principal action for patent infringement against ten defendants, all members of a group domiciled in the People’s Republic of China (PRC). Specifically, defendants 1, 2, and 8 are domiciled in the PRC, while defendant 7 is domiciled in Hong Kong, a Special Administrative Region (SAR) of the PRC.
The decision UPC_CFI_332/2024 concludes incidental proceedings that were initiated following the failure of the service of the statement of claim on defendants 1, 2, 7, and 8 during the main proceedings.

Service Attempts and Objections
For the defendants in question, the statement of claim was served at the address of one of the group’s companies, defendant 3, whose business address is in Düsseldorf, Germany. This address had been provided by the claimant. The service attempt failed because representatives of defendant 3 stated that it was not possible to serve defendants 1, 2, 7, and 8 at the address of defendant 3.

Following this failure, the claimant submitted a request on November 22, 2023, seeking to have the service at the business address of defendant 3 considered valid service for defendants 1, 2, 7, and 8.

In an order dated December 8, 2023, following comments from defendant 3, the reporting judge rejected the claimant’s request, on the grounds that service attempts must first comply with the Rules of Procedure. In the present case, where defendants 1, 2, 7, and 8 are domiciled outside the Member States of the UPC, service must be conducted in accordance with the Hague Convention of 1965 on the Service Abroad of Judicial and Extrajudicial Documents in Civil or Commercial Matters (Hague Service Convention), pursuant to Rule 274.1(a)(ii).

Issues with Service in Hong Kong
For defendant 7, domiciled in Hong Kong, the required elements under the Hague Service Convention were transmitted to the designated authority responsible for Hong Kong. The Mannheim Local Division complied with the formal requirements of the Hague Service Convention, and the designation used in the service forms correctly referred to “Hong Kong SAR, China,” according to the receiving authority.

However, in the Chinese and English translations of the claimant’s statement of claim, the term “Hong Kong” was used as such to designate the domicile of defendant 7. The receiving authority in Hong Kong refused to process the service request, notably because references to “Hong Kong” were listed alongside references to sovereign states such as “China” in the claimant’s statement. The receiving authority requested that “Hong Kong” be amended to “Hong Kong SAR, China” before the service request was resubmitted.

Rejection of Alternative Methods
The claimant was informed of the return of the notification documents by an order dated July 22, 2024, and was allowed to submit observations. On July 29, 2024, the claimant filed requests to serve the statement of claim on defendant 7 using alternative methods, in accordance with Rule 275.1. These requests included, for example, service on the defendant’s representatives in proceedings before the Munich Local Division of the UPC, service on representatives of other companies in the group involved in UPC proceedings, or service on other European companies in the group.

In its decision, the Mannheim Local Division rejected the claimant’s requests. The court held that all possible options under Rules 270-274 of the Rules of Procedure had been exhausted. Specifically, the service attempt at defendant 3’s business address in Germany during the main proceedings had been refused, and the subsequent service conducted in accordance with the Hague Service Convention under Rule 274.1(a)(ii) ultimately failed. Consequently, no further service attempts were required. The Mannheim Local Division emphasized that the claimant’s use of the designation “Hong Kong” in the statement of claim did not prevent service. The Hague Service Convention does not permit censorship of document content based on political considerations, and neither the authority responsible for service in the requested state nor the requesting court may censor or amend the content of the documents to be served. The documents must be served as presented by the party. Amendments to the content of the documents submitted by a party by the court itself are prohibited in light of the independence and impartiality to which the court is bound.

Through its statements and the return of the documents to be served, the receiving authority in Hong Kong clearly indicated that service would not be carried out without the requested amendments. This position is contrary to the obligations of the Hague Service Convention. However, given the seriousness and finality of the refusal, there was no need for a further attempt at service under the Hague Service Convention in accordance with Rule 274.1(a)(ii).

The claimant’s requests submitted on July 29, 2024, must be interpreted as seeking to proceed with service without complying with the formalities of Rule 274.1(a)(ii). Since the requests aim to take alternative measures, they must be understood as asserting the need to expedite the proceedings. However, given the failure of all formal service attempts, the proposed service methods have no chance of success.

The Mannheim Local Division thus rejected the claimant’s requests and considered the service conducted in accordance with the Hague Service Convention under Rule 274.1(a)(ii) to be valid.

To enable the defendant to become aware of the present decision, the Mannheim Local Division ordered a separate reference to this decision to be made on the publicly accessible homepage of the UPC website. In this case, the decision is also sent to the representatives designated in the proceedings before the Munich Local Division by registered mail with acknowledgment of receipt, as they are, under German professional law, required to inform their clients of correspondence received.

The Mannheim Local Division determined that formal service of this decision in accordance with Rule 276.1 of the Rules of Procedure was unnecessary. Such an attempt would inevitably fail for the same reasons as those leading to the present decision.

It follows that a further attempt to serve a statement of claim on a defendant domiciled outside the Member States of the UPC under an alternative procedure pursuant to Rule 275.1 of the Rules of Procedure is unnecessary, as all possibilities for service under Rules 270-274 of the Rules of Procedure have been exhausted and the competent authority under the Hague Service Convention has definitively and seriously refused service because the claimant’s designation of the defendant’s domicile did not align with its policy. Notably, the UPC must not censor documents submitted by parties at the request of the competent authority responsible for service.

Additionally, the decision recognizing the steps already taken to serve a defendant domiciled outside the Member States of the UPC as valid service must be published on the publicly accessible homepage of the UPC website if service of the decision in question to the defendant cannot be successfully completed for the same reasons.

 

By Pierre BAUDIN

 

 

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