The limits to the jurisdiction of the Unified Patent Court (UPC) to hear disputes relating to classic European patents validated in States that are not party to the UPC Agreement, as is the case of Spain, or to supplementary protection certificates issued in those States, are examined.
1. Introduction
Ever since coming into operation, there has been a tendency on the part of the Unified Patent Court ('UPC' or 'Court') to extend its jurisdiction to include patents that produce effects in States that are not party to the Agreement on a Unified Patent Court (the 'UPC Agreement' or 'Agreement'), as is the case of the Kingdom of Spain. This phenomenon is known in specialised circles as the court's 'long arm'.
However, although in certain cases the UPC does indeed have such jurisdiction, this is only possible within strict limits, limits that do not seem to be taken into consideration in a consistent manner. It is with this in mind that we begin herewith a series of papers analysing the limits of the UPC's international jurisdiction, the choice-of-law rules where the UPC can hear disputes regarding patents having effect in non-Contracting Member States, and questions related to the recognition and enforcement of UPC decisions and orders in those other States.
2. The UPC's international jurisdiction
The UPC is - as stated in Article 1 of the UPC Agreement - "a court common to the Contracting Member States and thus subject to the same obligations under Union law as any national court of the Contracting Member States"; it has jurisdiction for the settlement of disputes relating not only to European patents with unitary effect, but also to all types of classic (i.e. non-unitary) European patents and to supplementary protection certificates - both for medicinal and plant protection products - granted on the basis of unitary or classic European patents.
Being therefore a court equivalent to the other national courts of the Contracting Member States, the UPC is subject to the same rules of private international law that apply to those other courts. This explains why Article 31 of the UPC Agreement provides that the international jurisdiction of the Court shall be established in accordance with Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (better known as the 'Brussels Ia Regulation'), or, where applicable, in accordance with the Convention on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (the 'Lugano Convention'), signed in 2007 by the European Union, Denmark, Iceland, Norway and Switzerland. And the application of the Brussels Ia Regulation also explains why it has been amended to adapt it to the creation of the UPC, an amendment carried out by "Regulation (EU) No 542/2014 of the European Parliament and of the Council of 15 May 2014 amending Regulation (EU) No 1215/2012 as regards the rules to be applied with respect to the Unified Patent Court and the Benelux Court of Justice".
3. The legislative basis of the UPC's long arm with respect to Spain
3.1. Both the Brussels Ia Regulation (Article 4(1)) and the Lugano Convention (Article 2) establish as the forum, when determining international jurisdiction, the courts of the defendant's domicile, so that persons domiciled in a Member State shall, whatever their nationality, be sued in the courts of that Member State.
Consequently, the UPC has jurisdiction in actions which, falling within its subject matter jurisdiction, have as defendant a person domiciled in one of the contracting states party to the UPC Agreement. That this is the case is made abundantly clear by the Brussels Ia Regulation when, after expressly recognising (Article 71a(2(a)) that the UPC is a "common court", it provides in Article 71b that "a common court shall have 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".
Since the UPC Agreement recognises the jurisdiction of the court not only for unitary patents, but also for classic European patents, it follows that, where the defendant is domiciled in a contracting state party to the Agreement and the patent relates to a classic European patent, the court will have international jurisdiction in the action (even if the classic European patent is validated in a State that is not a party to the Agreement, as is the case with Spain).
In fact, the UPC has already declared itself competent to hear a number of claims for infringement, by defendants domiciled in a contracting state, of classic European patents validated in States that are not a party to the UPC Agreement. This is the case, for example, of the Decision of the Düsseldorf Local Division of the UPC's Court of First Instance of 28 January of the defendant, the defendant must be domiciled in a contracting state party to the UPC Agreement; and that, as the UPC's Court of Appeal has ruled in its Order of 19 August 2024 (UPC_CoA_388/2024), only those "Member States" that have signed and ratified the Agreement are considered "Contracting Member States".
3.2. The UPC's international jurisdiction in relation to European patents validated in Spain (or supplementary protection certificates granted by the Spanish Patent and Trademark Office on the basis of European patents) may also be due to the fact that the defendant in actions for which the UPC has subject matter jurisdiction is not domiciled in any Member State of the European Union (whether or not it is a Contracting State party to the UPC Agreement) or in any signatory State of the Lugano Convention. Take, for example, a company domiciled in Canada.
In this case, Article 6(2) of the Brussels Ia Regulation and Article 4(1) of the Lugano Convention provide that jurisdiction shall be governed in each Member State by the domestic law of that Member State, and not by the Regulation. However, in order to prevent national laws from depriving the UPC of jurisdiction, Article 71 ter.3 of the Brussels Ia Regulation also assigns jurisdiction to the UPC in these cases, by providing that "where the defendant is not domiciled in a Member State, and this Regulation does not otherwise confer jurisdiction over him, Chapter II shall apply as appropriate regardless of the defendant's domicile", which means recognising the UPC's jurisdiction.
3.3. Similarly, the Brussels Ia Regulation and the Lugano Convention allow the parties to submit (expressly or tacitly) to the authority of a court that does not initially have international jurisdiction, while respecting the exclusive jurisdiction laid down in these legal instruments. Consequently, where the parties have submitted to the authority of the UPC, this Court may also extend its long arm to hear disputes relating to classic patents validated in non-contracting states.
3.4. On the other hand, the UPC also has jurisdiction to take interim measures in relation to the infringement of a classic European patent validated in Spain (or in another non-contracting state) or of a supplementary protection certificate, even if the UPC does not have international jurisdiction as to the substance of the matter, in accordance with the criteria already examined.
Actions cannot be joined if one person infringes the European patent in Spain and a different person infringes the unitary patent
Article 35 of the Brussels Ia Regulation provides that "Application may be made to the courts of a Member State for such provisional, including protective, measures as may be available under the law of that Member State, even if the courts of another Member State have jurisdiction as to the substance of the matter". In any event, and as clarified in recital 33 of the Brussels Ia Regulation, "[w]here provisional, including protective, measures are ordered by a court of a Member State not having jurisdiction as to the substance of the matter, the effect of such measures should be confined, under this Regulation, to the territory of that Member State".
4. The limits of the UPC's jurisdiction
Although, as has just been explained, the UPC has international jurisdiction in actions relating to patents having effect in non-contracting states, this jurisdiction is subject to strict limits:
4.1. The UPC's jurisdiction does not extend to national patents.
The first limit of the UPC's long arm is that it does not apply to actions relating to national patents, even if the defendant is domiciled in a contracting state party to the UPC Agreement. This is because the UPC Agreement does not give the court subject matter jurisdiction in actions relating to national patents. Consequently, under no circumstances can the UPC extend its long arm to the point of hearing disputes concerning a Spanish national patent granted by the Spanish Patent and Trademark Office, nor can it do so to hear disputes concerning supplementary protection certificates granted on the basis of national patents.
4.2. The UPC's jurisdiction does not extend to classic European patents that are the subject of an opt-out
The long arm of the court cannot extend to classic European patents or supplementary protection certificates in respect of which the holder has exercised the option to exclude the jurisdiction of the UPC under Article 83 of the UPC Agreement.
4.3. The UPC's jurisdiction cannot be based on the jurisdiction of the place of infringement.
Although the Brussels Ia Regulation and the Lugano Convention lay down as a general rule that the courts of the State of the defendant's domicile have jurisdiction, they also provide for a number of special jurisdictions, under which a person domiciled in one Member State may be sued in another Member State. This is the case "in matters relating to tort, delict or quasi-delict", since a person domiciled in one Member State may be sued "in the courts for the place where the harmful event occurred or may occur" (Article 7(2) of the Brussels Ia Regulation and Article 5(3) of the Lugano Convention).
However, although this jurisdiction applies to the infringement of patents or supplementary protection certificates, the UPC can never rely on it to claim jurisdiction in relation to acts of infringement of a classic European patent validated in Spain (nor of a supplementary certificate granted by the Spanish Patent and Trademark Office). This is for the simple reason that, by definition, infringement of these titles can only occur in Spain and never in the territory of a Contracting Member State of the UPC Agreement.
4.4.The limits of jurisdiction when the action before the UPC concerns the infringement of a unitary patent and the infringement of the Spanish validation of the European patent on which the unitary patent is based.
Where the application to the UPC concerns both infringement of a unitary patent and infringement of the classic European patent validated in a State that is not a party to the UPC Agreement, different scenarios are possible.
1) It may happen, firstly, that the person responsible for these acts of infringement is the same person. In this case, the UPC has jurisdiction over all the acts of infringement if the defendant is domiciled in a Contracting State party to the UPC Agreement.
2) But it may also happen that the infringement is committed in each state by different persons. And in these cases, it may also happen that the different persons responsible may or may not all be dom - iciled in a Contracting State party to the UPC Agreement:
a) If they are, the UPC has jurisdiction on the basis of the jurisdiction of the de - fendant's domicile. Con - sider, for example, that several persons domiciled in the same Contracting State party to the Agree - ment (e.g. Germany) in - fringe a unitary patent (in one Contracting State) and the classic Span - ish European patent (in Spain). In this case, as all the parties involved in the infringement are domi - ciled in the same State (in the example, Germany), the courts of that country have jurisdiction in the in - fringement actions (both for the unitary patent and the classic European pat - ent). There is no need to apply the specific juris - diction rule of Article 8(1) of the Brussels Ia Regu - lation, which will be re - ferred to below, because in this case the parties are not domiciled in different States. See, for a case of this type, in relation to a classic British European patent, the decision of 28 January 2025 of the Düsseldorf Local Division of the Court of First In - stance of the UPC (UPC_ CFI_355/2023).
In the case where all the defendants are domiciled in Contracting States par - ty to the UPC Agreement, but not all are domiciled in the same State, the UPC has jurisdiction on the basis of the forum domi - cilii of the defendant and for the internal allocation of jurisdiction within the UPC, Article 33(1)(b ) of the Agreement applies, so that infringement actions may be brought before the local division of any of the States in which any of the defendants "has its residence or principal place of business or, in the absence of residence or principal place of busi - ness, its place of business, or the regional division in which that Contracting Member State partici - pates ".
b) But the situation is different if the defendant accused of infringing the classic European patent in Spain (or in another non-contracting state) is not domiciled in a con - tracting state. Consider the case where A, dom - iciled in Italy, infringes there the unitary patent and B, domiciled in Spain, infringes there the classic European patent validat - ed in Spain. In this case, it cannot be excluded that the claimant chooses to bring the action before the UPC (on the basis of A's domicile) and seeks to have it also hear the infringement of the classic European patent in Spain by B, arguing that the Spanish classic patent is "the same" as the unitary patent and that, after the grant of the European patent, the unitary patent was applied for and, as Spain is not part of the system, it was validated in Spain, giving rise to a classic European patent here.
However, in this second type of case, the possibility for the UPC to extend its long arm to acts of infringement of the classic European patent in Spain (or in another non-contracting state) is subject to very strict conditions, laid down in Article 8(1) of the Brussels Ia Regulation and in the case law of the Court of Justice. According to this article, "where he is one of a number of defendants, [a person may be sued] in the courts for the place where any one of them is domiciled, provided the claims are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings".
cin Case C-539/03 Roche, EU:C:2006:458, paragraph 41 - held that the possibility of bringing proceedings before the courts of the domicile of any one of the defendants "does not apply in European patent infringement proceedings involving a number of companies established in various Contracting States in respect of acts committed in one or more of those States even where those companies, which belong to the same group, may have acted in an identical or similar manner in accordance with a common policy elaborated by one of them". And, although this judgment was handed down in relation to the precedent Brussels Convention of 1968 on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters, its doctrine is equally applicable to the Brussels Ia Regulation, since, "as is apparent from recital 34 of the Brussels Ia Regulation, the Court's interpretation of the provisions of that convention and those of Regulation No 44/2001 ('the Brussels I Regulation'), which replaced it, also applies to the pro - visions of the Brussels Ia Regulation, which itself replaced the Brussels I Regulation, whenever those provisions may be regarded as 'equivalent'" (Judgment of the Court of Justice of 8 September 2022, IRnova , C-399/21, EU:C:2022:648, para - graph 29).
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