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“Long arm jurisdiction” before the UPC: Local Division Düsseldorf affirms its juristiction for the British part of a European patent
Local Division Düsseldorf, Decision dated 28 January.2025, Fujifilm v Kodak (UPC_CFI_355/2023)
On January 28, 2025, the Düsseldorf Local Division of the Unified Patent Court (UPC) decided on the jurisdiction for a complaint regarding the British part of a European patent in the case UPC_CFI_355/2023. This decision raises significant questions regarding the international jurisdiction of the UPC and its scope with regard to non-UPC member states such as the United Kingdom.
I. Facts of the case
In the underlying complaint, the Claimant asserted patent infringement and sought, among other things, injunctive relief and damages for acts in Germany and the United Kingdom. The Defendants raised a plea of lack of juristiction of the UPC with respect to the UK part of the EP, in particular arguing that Art. 34 UPCA limits the jurisdiction of the UPC to the Contracting States of the UPC. Furthermore, reference was made to the exclusive jurisdiction of British courts under international principles of patent law.
The Defendants filed a counterclaim for revocation of the patent in suit and applied for the patent in suit to be declared invalid in all the Contracting States in which the patent in suit is valid. The Defendants did not file an explicit application for the patent in suit to be declared invalid in the United Kingdom as well.
II. Decision and grounds
The Düsseldorf Local Division affirmed the UPC’s juristiction for the British part of the patent in suit.
The Local Division in Düsseldorf has international jurisdiction under Article 4 of the Brussels I Regulation because all the Defendants are domiciled in Germany. Since the jurisdiction is based on the domicile and not on the actions of the Defendants, the Local Division has also assumed international jurisdiction for actions in third countries. Furthermore, the decision states that Art. 71b of the Brussels I Regulation governs the UPC’s juristiction and expressly includes disputes arising under European patents, even if they relate to non-contracting states. This means that the regulation is not territorially limited to the contracting states. Furthermore, Art. 34 UPCA does not contain any restrictions to the effect that a decision regarding the British part of a European patent is excluded. Art. 34 UPCA would rather only regulate the case if the EP is not validated in the entire territory of the UPC. Art. 34 UPCA does not, however, contain any regulation regarding European patents that are validated outside the territory of the UPC.
Further the Düsseldorf Local Division also dismissed the complaint with regard to the British part of the patent in suit. The court came to the conclusion that one of the grounds for invalidity put forward by the claimant applied and, on the basis of the counterclaim for revocation, declared the German part of the patent in suit to be invalid. In view of this, the court did not issue a decision against the Defendants under the British part of the patent, because the validity of the patent in suit was a prerequisite for the conviction of the Defendants. It was not apparent that the question of validity under British law should be assessed differently.
Subseqeuntly there was no decision on whether the court would have had juristiction over a possible counterclaim for revocation of the British part of the patent in suit, since the Defendants did not extend the counterclaim for revocation to the British part.
The decision emphasizes that the UPC is intended to enable uniform law enforcement, which corresponds to the objective of the UPCA. This applies even if the patent in question is registered in a non-UPC state such as the United Kingdom.
III. In Conclusion
The decision of the Düsseldorf Local Division provides important clarifications regarding the UPC’s juristiction in cases concerning non-contracting states. It strengthens the position of the Unified Patent Court as the central forum for the enforcement of European patents. In terms of its content, the Düsseldorf Local Division follows the principles applied by the national courts in Germany.
Insofar the decision of the Düsseldorf Local Division is correct in any case as the Defendants were not ordered to pay damages under the British part. The infringement of the British part was to be assessed under British law. Under UK law, the Defendants would have been entitled to raise the objection of invalidity. Since the Court declared the German part of the patent in suit tob be invalid and no differences in the validity assessment under UK law were evident, a conviction on this basis was ruled out.
From a strategic point of view, it may therefore be advisable in the future, depending on the individual case, to also assert the British part of a European patent before the UPC. However, it is unclear how the UPC will assess the infringement of a European patent under British law and how this will affect the proceedings and, in particular, the duration of the proceedings. It also remains to be seen whether other Local Divisions or the Court of Appeal will follow this decision.