The UK is not involved in the Unified Patent Court (UPC). However, this did not prevent the UPC from deciding that it is competent to hear an infringement action in relation to the UK.
The case: Fujifilm vs. Kodak
Fujifilm (the claimant), which owned EP3594009, validated in both Germany and the UK. Fujifilm alleged that Kodak was infringing EP’009 in both Germany and the UK. In response, Kodak filed a revocation action.
Kodak also asserted that the UPC lacked jurisdiction in relation to the UK side given it is not a contracting party to the UPC. Initially, any decision on this was deferred to the main proceedings because of an opinion provided by the Advocate General of Court of Justice of the EU. However, this assessment was reversed and the court decided the issue earlier
Proceedings and outcome
Kodak argued that Article 34 UPCA limited the UPC’s jurisdiction to only member states. As Germany was the only member state involved, that was the only territory for which the UPC could validly reach a conclusion.
Contrarily, Fujifilm argued that the UPC’s Article 34 should be considered alongside Article 3(2) of the EU regulation, which states “A European patent with unitary effect shall have a unitary character. It shall provide uniform protection and shall have equal effect in all the participating Member States”.
The court explicitly rejected the arguments (from Kodak) that the UPC did not have jurisdiction over the UK. It decided that there is nothing in Article 34 that restricts the jurisdiction to only UPC member states.
Thus, the court sided with Fujifilm, provided that the defendant is based in a contracting member state of the UPC. The court stated that “if the defendant is domiciled in a Contracting Member State (here: Germany), the Unified Patent Court has jurisdiction to hear the infringement action in respect of the UK part of the patent in suit. This also applies if the defendant has filed a counterclaim for revocation in respect of the German part of the patent in suit. Even then, as regards the infringement action concerning the United Kingdom, the Unified Patent Court has jurisdiction to hear the case.”
It is important to note that the court did not decide on the infringement issue in relation to the UK. EP’009 was revoked in Germany (the UPC territory involved) and the UPC judges considered it would be unlikely to survive a validity challenge in the UK courts. Thus, no decision on infringement was necessary or made.
Important points for UK rights holders
The UPC may exercise jurisdiction over infringement actions involving the UK part of a European patent. However, it should be noted that the UPC declined to grant remedies relating to infringement in the UK meaning UK proceedings would be required anyway.
The UPC may imply that a UK patent is invalid while hearing an infringement action even if it cannot decide on it – the court noted that “even if the Court cannot decide on the validity of the UK part of the patent, and certainly cannot revoke that part, the infringement action cannot be successful in such a factual and legal situation”.
The UPC in this case also declined to stay proceedings pending a validity decision. However, it should be noted that it was stated that there was no need because there was no pending revocation in the UK in this case. They also noted there was no legal basis to order the defendant to bring such a revocation action in the UK.
We do not yet know if any parts of this decision will be appealed. However, it will be very interesting to note any developments in relation to the UPC’s jurisdiction over UK matters.
