When a medicinal product or medical device is marketed all over Europe, usually by means of several national companies, the question for owners of European patents and their exclusive licensees arises: Can I sue all the distributors of allegedly infringing products in one place with one single action? And what if the product is also sold in non-UPC countries such as Turkey, the UK, Spain, Poland, or Switzerland? The latter three are particularly important as a lot of medicinal products are manufactured there and later shipped to UPC member states.
The short answer is: Yes, that is possible. The so-called long-arm jurisdiction of the UPC allows for cross-border injunctions outside the UPC territory if the defendant is domiciled in a UPC country.
In this article, we explain the following consequences of the long-arm jurisdiction for life sciences companies:
- Defendant(s) based in a non-UPC and non-EU territory when no jurisdiction agreement is in place, eg Turkey, the UK: The UPC can exercise long-arm jurisdiction for infringements of national parts of European patents. An invalidity defence may be considered with inter partes effect.
- Defendants based in a non-UPC and non-EU country that is party to the Lugano Convention (eg Switzerland): The UPC can exercise long-arm jurisdiction for infringements of national parts of European patents but it may not, also not if raised as a defence to the infringement claim, assess the validity of the respective national parts of the European patent.
- Defendants based in EU but non-UPC countries (Spain, Poland, Ireland (as long as not ratified)): The UPC can exercise long-arm jurisdiction for infringements of national parts of European patents but it may not, also not if raised as a defence to the infringement claim, assess the validity of the respective national parts of the European patent.
BSH v Electrolux (C-339/22) – long-arm jurisdiction
In this highly awaited decision, the Court of Justice of the European Union (CJEU) stated that Article 4(1) Brussels I bis Regulation lays down the jurisdiction of the EU Member States’ courts on defendants domiciled in the EU unless one of the exceptions of the Regulation applies.
One of those exceptions is the exclusive jurisdiction of the respective Member State courts in proceedings concerned with the registration or validity of any European patent granted for that Member State, Article 24(4), irrespective of whether the issue of validity is raised by way of an action or as a defence in infringement proceedings.
Consequently, in patent infringement proceedings at an EU court where the defendant is domiciled, an action for infringement of a patent granted by another Member State is admissible. However, the Court may not (directly or indirectly) find on the validity of said patent but must declare that it has no jurisdiction in that regard.
According to the CJEU, this allows the holder of a European patent to concentrate all of its infringement claims against the same defendant for infringement in several Member States and to obtain overall compensation in a single forum. If the defendant has brought a nullity action in the other Member State which the infringement court considers reasonably justified, it can stay the infringement proceedings.
The CJEU emphasises that the Regulation provides a system of jurisdiction internal to the EU only. Consequently, Article 24(4) does not apply when the patent was granted or validated in a third (non-EU) state as the Regulation does not confer any jurisdiction to a third state court. Hence, under Article 4(1) Regulation, the courts of the Member State in which the defendant is domiciled generally have jurisdiction in such cases and may also make findings on the validity of that patent as far as this question is raised as a defence in the context of the infringement action.
Again, this does not apply to European patents granted or validated in third states that are party to the Lugano Convention, which confer exclusive jurisdiction of issues relating to patent validity on the states that are a party to that convention or if there are comparable bilateral conventions between a Member State and a third state.
A stay of proceedings, in line with Article 33 and 34 of the Regulation, is also possible in these cases. In any event, the decision on the nullity defence raised in the infringement proceedings against the European patent of a third State cannot result in the revocation of said national part of the European patent but only take inter partes effect.
Reaction of the UPC to the BSH case
After this ruling by the CJEU, all eyes were on how the UPC would deal with long-arm situations. The UPC courts have generally confirmed that the UPC has long-arm jurisdiction in infringement cases (LD Düsseldorf, UPC_CFI_355/2023 Fujifilm v Kodak; LD Paris, UPC_CFI_702/2024 Mul-T-Lock v IMC Créations).
In the case Fujifilm v Kodak, all defendants were domiciled in Germany so that Article 4(1) of the Regulation applied, conferring to the UPC jurisdiction of the infringement of the relevant European patent committed in all the States for which the European patent had been granted. In particular, the court held that it has jurisdiction of the infringement with respect to the UK part of a European patent. As no revocation was sought for the UK part of the European patent in dispute, the decision of the CJEU in BSH v Electrolux was not decisive.
In Mul-T-Lock v IMC Créations, one of the defendants was based in France, the other one was based in Switzerland and the allegation of infringement covered the national parts of the European patent in Spain (non-UPC territory), the UK, and Switzerland (both non-UPC and non-EU territory). The LD Paris not only held that it has jurisdiction on the infringement of the Spanish, UK, and Swiss part of the European patent, but also on the Swiss based defendant because one of the defendants was based in France, which generally opened the jurisdiction of the Court seized.
Extending the jurisdiction to defendants who are not domiciled in a Member State may however only be possible under the strict requirements of Article 8(1) of the Regulation, namely where the defendant is one of a number of defendants, and another defendant is domiciled in the respective Member State and provided that the claims are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings. Whether this is the case in patent infringement proceedings with several defendants is still to be decided by the Court of Appeal.
The future
With the application of the BSH ruling of the CJEU, litigation in the UPC promises to be particularly efficient for patent owners and exclusive licensees who want to get a fast infringement decision (and, in some cases, inter partes invalidity decision) covering multiple jurisdictions in only one proceeding.
