Since the Unified Patent Court opened on 1 June 2023, one of the more interesting legal questions which has been considered is the matter of jurisdictional competence. Following on from our comparison of the EPO and UPC’s approaches to inventive step (available here) and as the dust begins to settle on some of the early decisions, it is a good time to reflect on the early decisions of the UPC in relation to jurisdiction and to compare the UPC with the EPO in this regard.
Settled Ground – the EPO’s jurisdiction
The EPO has 40 member states, including non-EU member states, such as the UK, Iceland, Switzerland, Norway and Türkiye. A patent application at the EPO can, on grant, be validated as a national patent in any one of these 40 member states, as well as any extension or validation states for which the necessary fees were paid. It is also possible to obtain a Unitary Patent, which currently covers 18 EU countries, as explained further below.
During prosecution of a European Patent Application, third parties are able to file observations on the patentability of the invention. These observations must be filed in one of the EPO’s official languages and may be anonymous. Additionally, if the observations are not filed anonymously, the EPO will endeavour to issue the next communication within three months of receipt of the observations. Unlike opposition proceedings (see below), third party observations relating to clarity will be considered.
EPO Opposition Proceedings
Following grant of a European Patent, third parties may oppose the grant within 9 months. A notice of opposition may be filed on the grounds that: the subject matter does not comply with Articles 52 to 57 EPC (i.e., that the patent is not novel, inventive and/or industrially applicable, or relates to excluded subject matter); the patent is insufficient; and/or that the patent contains added matter beyond the content of the application as filed.
Following EPO Opposition proceedings, the patent will either be:
The effect of revocation is that the patent is deemed to have never been in effect in any of the contracting states. Filing an opposition is therefore an effective way to centrally attack a competitor’s patents across a wide jurisdiction.
The Unified Patent Court (UPC) – an overview
Currently, 18 EU states have ratified the UPC Agreement: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Romania, Slovenia, Sweden.
Another seven EU states are in enhanced cooperation and intend to ratify the UPC Agreement (although it is not clear when this will take place).
There are two EU member states not in enhanced cooperation, Spain and Croatia, while a number of key European markets are not within the EU and are therefore unable to join the UPC, such as the UK, Norway and Switzerland.
The UPC Agreement provided for the creation of a Unitary Patent, which provides protection for its proprietor across each member state which has ratified the UPC Agreement.
As well as establishing the Unitary Patent, the UPC Agreement further provided for the establishment of a Unified Patent Court (UPC), which is competent to hear disputes relating to infringement and validity of Unitary Patents. This is the first major difference between the jurisdictional competencies of the UPC and the EPO; unlike the UPC, the EPO is not competent to hear infringement proceedings.
Additionally, by default, the UPC has jurisdiction over granted national European patents in UPC member states. For example, a French national validation of a European patent would fall under the jurisdiction of the UPC. However, until at least 31 May 2030, it will be possible to opt out of the jurisdiction of the UPC for national validations; however an opt-out cannot be filed where the European patent has been validated as a Unitary Patent.
Therefore, any infringement or revocation action in relation to an EP patent granted in a UPC member state can be litigated before the UPC (in the absence of an opt-out having been filed).
Disputes concerning non-UPC member countries
As the UPC is competent to hear infringement proceedings relating to national EP validations, there was something of a question mark whether the UPC would consider itself competent to hear disputes which related to national validations of EP patents in non-UPC member states, in particular when these proceedings were brought in combination with proceedings relating to Unitary Patents, or national validations in member states.
The first point of note is that the UPC is clear that it is not competent to hear standalone revocation actions concerning national validations of European Patents in non-UPC member states. Therefore, a standalone action to revoke an EP(GB), a UK national validation of a European Patent could not be heard at the UPC.
However, where infringement actions are brought in relation to EP patents in both UPC member and non-member states, then the UPC has applied a ‘long-arm’ approach to its jurisdictional competence. As noted in our bulletin on Mul-T-Lock France & Mul-T-Lock Suisse vs. IMC Creations, the Paris Local Division of the UPC found that where a defendant is domiciled in the EU, the UPC is competent to device on infringement for all parts of a European patent.
As we wrote about in our bulletin on the subsequent decision in the case between Kodak (defendant) and Fujifilm (claimant) at the Mannheim Local Division, the UPC subsequently issued an injunction and damages in relation to activities in the UK, after finding that the EP(UK) at issue was both valid and infringed, with the subject of the EP(UK) being the same as a German national validation which was being litigated in the same proceedings. In this case, as Kodak argued that the patents were invalid, the court clarified that the UPC is not competent to revoke patents in non-UPC member states. However, in the case of such parallel proceedings, the court could issue a decision on the validity of national validations for non-UPC member states, however such a decision would only be binding between the parties to the decision.
Kodak appealed the findings of the Mannheim Local Division to the UPC Court of Appeal, where the finding of infringement was overturned. However, the Court of Appeal did provide further guidance on the competence of the UPC to hear disputes relating to non-UPC EP validations (for EU-domiciled defendants). In particular the decision stated that:
In relation to non-EU domiciled defendants, we anticipate that further clarity on the UPC’s approach to long-arm jurisdiction will be provided by the CJEU in due course, since earlier this year, the UPC Court of Appeal referred questions of jurisdictional competence in relation to non-EU defendants.
Summary
In the initial days of the UPC, there were some who wondered (and with good reason) if the option of UPC invalidity proceedings would decrease the uptake of centralised opposition proceedings at the EPO.
While the UPC is certainly an attractive forum, EPO oppositions remain a highly cost-effective tool when looking to invalidate competitor’s patents within the nine-month window for filing a notice of opposition post-grant. EPO third party observations also provide a low-cost way to comment on a competitor’s pending applications, as well as facilitating anonymity. Therefore, for parties aware of applications which may represent threats, the EPO’s long-established opposition procedure remains popular.
However, the UPC’s long-arm approach to jurisdiction makes it an attractive prospect for post-grant invalidity proceedings, especially in cases in which the opposition window has passed.
This is also to say nothing of the fact that the UPC is competent to decide on questions of infringement, which the EPO is not.
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