Posted by Laura Ercoli on Thursday January 30th, 2025

Unified Patent Court has jurisdiction over infringement proceedings in the UK: the Düsseldorf Local Division’s ruling

The Düsseldorf Local Division of the Unified Patent Court has found that the court’s jurisdiction in infringement proceedings can include the portion of a European patent with validity in the United Kingdom.

On 28 January 2025 the Düsseldorf Local Division (DLD) of the Unified Patent Court (UPC) issued a decision stating that under certain circumstances the UPC is competent in the United Kingdom (UK) for infringement proceedings concerning a European patent that is valid in that state.

You may be forgiven for believing that European patent states not participating in the UPC fall outside its jurisdiction. The DLD’s ruling in case UPC_CFI_355/2023 reveals that it is not always that simple.

Facts and arguments in the case

Fujifilm brought proceedings before the UPC against three Kodak companies for infringement of its European patent EP 3594009 B1 with validity in Germany and in the UK. The defendants argued against the competence of the UPC on the portion of the patent with validity in the UK.

Articles 34 and 31 UPCA

The defendants claimed that according to Article 34 of the Unified Patent Court Agreement (UPCA) the UPC’s decisions only cover the territory of the UPCA’s member states in which the European patent has effect, and the UK is no longer a UPC member state.

The DLD did not agree, and supported Fujifilm’s argument that Article 34 of the UPCA covers the territorial scope of the UPC’s decision within the territory of the UPCA’s member states, but does not exclude decisions having effect beyond such territory.

The DLD took the view that in the case at issue, the UPC has jurisdiction under Article 31 of the UPCA, stating that “the international jurisdiction of the UPC shall be established in accordance with the European Union’s Regulation 1215/2012”.

Brussels I bis regulation

The European Union’s Regulation 1215/2012 (aka Brussels I bis Regulation) concerns jurisdiction and the recognition and enforcement of judgments in civil and commercial matters.

Article 24(4)

The defendants invoked the regulation’s Article 24(4), setting forth that proceedings concerning the registration or validity of patents are exclusive competence of the national courts of European Union member states.

The DLD pointed out that such a provision must be read in the light of the case law of the Court of Justice of the European Union – the highest authority on the interpretation of European Union law – which has expressly ruled out the applicability of Article 24(4) in patent infringement proceedings.

In addition, Article 24(4) only applies to proceedings between EU member states. Since the UK is no longer a member state of the EU, Article 24(4) cannot give exclusive jurisdiction to the UK’s national courts over the national portion of a European patent with validity in the UK.

Article 4(1)

The DLD concluded that the UPC has jurisdiction in the UK based on the combined reading of Article 31 of UPCA and of Article 4(1) of the Brussels I bis regulation.
Article 4(1) sets forth that “persons domiciled in a [European Union] member state shall, whatever their nationality, be sued in the courts of that member state”. Under the same regulation, the UPC is a court of a European Union member state.

Outcome

In the case at issue, the defendants are all domiciled in Germany, which is of course a European Union member state.

The DLD therefore concluded that based on Article 31 UPCA and Article 4(1) Brussels I bis, as well as on the fact that in the proceedings brought by Fujifilm for infringement of its European patent EP 3594009 B1 the defendants are all domiciled in Germany, the UPC has jurisdiction over both the German and the UK portion of the patent.

The above is certainly a very interesting finding, albeit void of practical effects in the case at issue, as the DLD declared the German portion of Fujifilm’s patent to be invalid; for the same reason, the DLD refused to grant remedies regarding infringement in the UK.