THE JURISDICTION OF THE UNIFIED PATENT COURT
The Brussels Regulation and the Lugano Convention
In court proceedings in which the two opposing parties have their domicile/residence (or registered office, in the case of legal persons) in different countries, the rules on international jurisdiction determine which courts of which state are competent to hear and determine such disputes.
With regards to the UPC, the art. 31 of the Agreement on the unified patent court (Agreement on a Unified Patent Court – “UPCA”) refers to the Regulation (EU) no. 1215/2012 (“Brussels Regulation”) or, where applicable, to the Convention relating to jurisdiction, the recognition and enforcement of judgments in civil and commercial matters (“Lugano Convention”).
The international Jurisdiction according to the “general rule”
According to the rules contained in the Brussels Regulation and in the Lugano Convention, the general principle is that the parties can be sued before the court existing at their domicile/registered office (cf. art. 63 Brussels Regulation).
In the case of the UPC, the general jurisdiction rule applies differently depending on the country.
People domiciled in an EU Member State (“EU State”) can be sued, regardless of their nationality, before the courts of that Member State (cf. Article 4, paragraph 1, of the Brussels Regulation) and, in the event that it also participates in the UPCA, the UPC replaces the national courts (cf. Article 71bis.1, 2.a, Article 71ter.1 Brussels Regulation) and can decide the case.
Conversely, people domiciled in an EU state which is not a contracting state of the UPCA (e.g. Poland and Spain) can only be sued before their respective national courts (Article 4.1 of the Brussels Regulation) on the basis of the general rule, since art. 71ter.1 of the Brussels Regulation does not apply in this case.
The same applies to people domiciled in a member state of the Lugano Convention. In fact, people domiciled in, for example, Norway or Switzerland can only be sued before the courts of these states (cf. Article 2.1 of the Lugano Convention) on the basis of the general jurisdiction. In fact, the Art. 71ter of the Brussels Regulation does not apply in this case either and there is no corresponding provision in the Lugano Convention.
Finally, for defendants domiciled outside the EU and in States not adhering to the Lugano Convention, the jurisdiction is generally determined according to the rules of the national law (cf. Art. 6.1 of the Brussels Regulation and Art. 4.1 of the Lugano Convention).
To summarize and in general terms, the UPC will have jurisdiction only if the defendant is domiciled in an EU Member State which has also joined the UPCA.
Jurisdiction according to “special” criteria
Such simplicity is however only theoretical, because the above-mentioned general rule (domicile of the defendant) is rarely applied, preferring instead different criteria for establishing the jurisdiction, known as “special”.
Below are some examples, among the most relevant ones:
- the parties can be sued before the court of the place where the damaging event occurred or may occur (Article 7.2 of the Brussels Regulation and Article 5.3 of the Lugano Convention);
- several subjects can be sued together in the country in which only one of them is domiciled (Article 8.1 of the Brussels Regulation and Article 6.1 of the Lugano Convention.
Given that – according to the art. 71ter.1 of the Brussels Regulation the UPC replaces the national courts of each EU States when these participate in the UPCA –, it may happen that the parties domiciled in an EU State not adhering to the UPCA are sued in another EU State which instead adheres to it, if the European patent has been infringed in the latter. In that case, the UPC is competent.
For example, a person domiciled in Spain (EU state not adhering to the UPCA) can be sued before the UPC if the European patent has been infringed in Italy (EU state adhering to the UPCA).
The competent court would be the Italian one according to the art. 7.2 of the Brussels regulation, but according to art. 71ter.1 of the same Regulation the Italian court is replaced by the UPC because Italy adheres to the UPCA.
Otherwise, if the person domiciled in Spain infringes a patent in another EU state which does not adhere to the UPCA (e.g. Croatia), then the UPC would not be competent because the art. 71ter of the Brussels Regulation would not apply.
So, what matters is not whether the defendant is domiciled in a state adhering to the UPCA or not, but rather whether the EU state in which the counterfeiting activity takes place does. This is what determines the jurisdiction of the UPC.
The same applies for those countries adhering to the Lugano Convention, since the Art. 67 (paragraphs 1 and 2) of the Lugano Convention does not prevent the judge of a State – bound by the above-mentioned convention and by another convention relating to a particular matter (in our case the UPCA) – from basing his/her jurisdiction on the latter, even if the defendant is domiciled in the territory of another State which exclusively adheres to the Lugano Convention but not to the other one.
Therefore, as a matter of example, a person with domicile in Switzerland (i.e., State adhering to the Lugano Convention but not an EU one and not a member of the UPCA) can be sued before the UPC in the event of a possible counterfeiting activity carried out in Italy (or in Germany or France, i.e., in EU States adhering to the Lugano Convention and the UPCA).
Finally, in the event that the defendant is domiciled in a non-EU member state or in a state not adhering to the Lugano Convention, the statutory provisions on the jurisdiction of the Brussels Regulation apply regardless of the defendant’s domicile (art. 71ter.2 of the Brussels Regulation). This means that even the defendants domiciled outside the EU (for example in Turkey) can be sued before the UPC, if the damaging event, i.e. the patent infringement, occurred in an UPCA member state.
To conclude, the rules relating to the UPC, including those on precautionary proceedings and compensation for damages (the so-called “long arm” of the UPC), are intended to extend the jurisdiction of the new court even beyond what seems evident at first glance.
However, many of the before-mentioned rules have not been applied yet, there will be objections on behalf of defendants and therefore their scope and interpretation will have to be examined in the light of future decisions of the higher courts.