Context: On May 14, 2024, the Grand Chamber of the European Court of Justice (ECJ) heard BSH Hausgeräte v. Electrolux, a preliminary reference by a Swedish court concerning the jurisdiction of courts in EU member states over patent infringement occurring in other countries, including non-EU member states (May 14, 2024 ip fray article).
What’s new: Today, on the eve of the first anniversary of the Unified Patent Court (UPC), the President of the UPC’s Court of Appeal, Judge Dr. Klaus Grabinski, keynoted the UPC Conference that took place at Bucerius Law School in Hamburg, Germany (conference program). One of this slides references the original opinion by Advocate General Nicholas Emiliou in BSH Hausgeräte v. Electrolux and explicitly makes it a possibility that the UPC will enjoin defendants domiciled in a UPC member state with respect to their infringement of EPO-granted patents even in countries that are not UPC member states. Practically, this would mean that the court could stop infringements and award damages with respect to the infringement of unitary patents or non-opted-out EP (bundle) patents in such countries as Spain (an EU member state that has not yet joined the UPC) and Turkey (not an EU member state, thus not a UPC member state).
Direct impact: While the ECJ has yet to decide BSH Hausgeräte v. Electrolux, practitioners may already consider including non-UPC member states in their list of countries with respect to which they would like the UPC to enjoin infringers and/or award damages. For preliminary injunctions, the ECJ ruling in that landmark case may not be available in time, but there is a high probability that the decision will come down before any new UPC complaint brought from here on out is actually adjudicated.
Wider ramifications: This interpretation of EU law could make the UPC even more attractive for patent holders seeking to enforce their rights. At the same time, that may be viewed unfavorably by EU member states that could join the UPC but have deliberately stayed out of it as well as non-EU member states that are members of the Europan Patent Organization (which runs the EPO) but couldn’t join the UPC (for lack of being EU member states).
At today’s Hamburg conference, President Dr. Grabinski presented a slide on the jurisdiction of the UPC. ip fray has obtained that slide, but instead of showing an image, will now just reproduce the text (verbatim and with the same styles apart from not underlining the headline):
Unified Patent Court
- has jurisdiction on the validity and infringements of
- European Patents with Unitary Effect (Unitary Patents)
- European Patents (Bundle Patents)
- that have not been opted-out
- that occurred in any of the Contracting Member States and
- under certain conditions, even when the infringement occurred in a non-contracting EU or EPC Member States.
- Art. 71b Brussels Ia Regulation
- See opinion of AG Emiliou of 22/2/2024, C-339/22 – BSH Hausgeräte GmbH/Electrolux AB (infringement of a EP in various EU and Non-EU Member States).
What this slide does not (as it cannot) suggest is that the UPC could expand its jurisdiction to national patents. Article 1 of the UPC Agreement clearly gives the UPC a mandate only with respect to “disputes relating to European patents and European patents with unitary effect.”
But President Dr. Grabinski’s slide does say that “under certain conditions” the UPC may have jurisdiction even over acts of infringement committed in countries that are not EPC member states. In this context, he cites to the statute that essentially says a common court (which is what the UPC is as per the UPC Agreement) “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.”
Then, the final bullet point references the original opinion by AG Emiliou (who is now working on a new one, further to the recent Grand Chamber hearing) in BSH Hausgeräte v. Electrolux. A key criterion in that case is the defendant’s legal domicile. For purposes of the UPC, this means a company that is based in a UPC member state could be enjoined and/or ordered to pay damages with respect to other countries in which the same EPO-granted patent is registered. Those countries would just have to be member states of the European Patent Organization (otherwise an EPO-granted patent couldn’t be valid there).
So far, it appears that claims have been brought in the UPC only with respect to UPC member states. With today’s slide, President Dr. Grabinski effectively encourages plaintiffs to go beyond. Anyone doing so now risks a decision by the ECJ in BSH Hausgeräte v. Electrolux that may, by extension, make it impossible for the UPC to exercise jurisdiction with respect to non-UPC member states. There could also be a mixed result where, by extension, the UPC would have jurisdiction over infringements in EU member states that have not (yet) joined the UPC, but not with respect to non-EU member states such as Switzerland and Turkey.
The European Commission and the French government advocated a rather expansive approach at the Grand Chamber hearing. The new opinion by AG Emiliou is slated for July 11, 2024. Today’s keynote by President Dr. Grabinski makes BSH Hausgeräte v. Electrolux even more relevant.