UPC Legal Compass: Jurisdictional challenges at the UPC – infringement v validity?

In a recent decision, the Local Division Dusseldorf of the UPC established that the UPC – in principle – has jurisdiction to decide on infringement in all EPC member states, including non-UPC states. This benefits plaintiffs, since they will be able to effectively assert their European Patent in more jurisdictions via one single action.

At the same time, the Panel confirmed – though only as part of its reasoning – that the UPC can’t rule on a revocation action with effect for non-UPC states by referring to art. 24 Brussels recast and the underlying CJEU decision. This finding severely limits the risk in asserting the EP against infringement in a non-UPC member state in the UPC action, because in turn there’s no risk in the respective national part of the EP being revoked.

While from the outset leaning towards favouring the plaintiff, in the decision the panel also held that if the patent-in-suit’s validity is challenged by way of counterclaim for the contracting member states, a finding of invalidity will also prevent the UPC from issuing an injunction for the non-UPC member state. This at least limits the risk for the defendants that the lack of jurisdiction for validity would prevent them from defending the infringement attack with validity challenges for the non-UPC jurisdiction, as the court is willing to apply its validity considerations for the UPC jurisdictions to the “other” jurisdictions as well and won’t issue different infringement decisions.

The court also mentioned, that for a pending revocation action in the non-UPC state, instead of a final decision, a stay may be necessary. But due to such an action not having been filed, it didn’t have to make a decision. Defendants can take some comfort that the UPC will also reflect their validity attacks on the national parts of the EP related to UPC member states on their assessment of the infringement asserted with respect to non-UPC member states. But they should duly assess if a national validity attack should be brought nonetheless, potentially resulting in an (isolated) stay of the UPC proceedings to the extent affected.

What’s next?

• The CJEU will issue a decision on the scope of EU courts’ jurisdiction for patent infringement in third countries (ie non-EU member states) and its relation to validity objections soon.
• The decision may also provide guidance with respect to the UPC’s jurisdiction to decide on infringement with respect to non-UPC member states if the validity of the patent is/isn’t attacked in that non-UPC member state.
• Further background, especially regarding the UK angle, can be found here.