To mark the second anniversary of the UPC, we examine the relationship between the UK patents jurisdiction and the UPC.
In part one we explain the UPC’s long-arm relationship with the UK. In part two we examine how defendants might respond in an attempt to prevent long-arm jurisdiction by the UPC and in part three we ask whether the UK should consider joining the UPC in future.
Part two: How can long-arm reach be prevented in the UK?
As explained in part one, the 'long-arm jurisdiction' of the UPC concerns the extent to which the jurisdiction of the UPC can be extended to member states of the EPC which are not contracting member states of the UPC, including the UK.
How can a defendant in the UK prevent the UPC taking jurisdiction over an alleged patent infringement in the UK and making a decision on infringement and validity that binds the parties?
Obtaining an ASI
The answer is that the defendant would need to obtain an anti-suit injunction (ASI). The English court has a long record of considering ASIs as equitable remedies and has the discretion to grant them in broadly two situations:
- to restrain foreign proceedings brought in breach of a jurisdiction clause or an arbitration agreement or
- to restrain vexatious or oppressive conduct in pursuing foreign proceedings where England is the natural forum.
The principles governing the exercise of the court’s discretion in granting ASIs have been set out in the House of Lords decisions in Donohue v Armco Inc ([2001] UKHL 64) and Turner v Grovit ([2001 ] UKHL 65). In summary, the court’s discretion to grant an ASI is guided by a number of principles, which include the following:
- the jurisdiction is to be exercised when justice requires it
- injunctions restraining proceedings in a foreign court are directed against the parties bringing proceedings or threatening to bring proceedings and not the court
- an injunction will only be issued against a party who is amenable to the jurisdiction of the English court
- (outside the context of exclusive jurisdiction and arbitration agreements), an English court would exercise its power to restrain a party from pursuing foreign proceedings if such pursuit would be ‘vexatious or oppressive’
- generally, the English court would only grant an anti-suit injunction if it concludes that it provides the natural forum for the resolution of the action.
The English court will exercise its jurisdiction to grant such injunctions cautiously and considerations of comity are important.
ASIs in patent proceedings
Despite the many authorities on ASIs in UK proceedings, cases relating to patents have mostly been concerned with FRAND disputes, and these are relatively scant. This is because ASIs have been issued more often by foreign courts to prevent parties from litigating parallel matters in the UK.
As a result, it is the anti-anti-suit injunction (AASI) authorities where guidance on ‘vexatious or oppressive conduct in pursuing foreign proceedings’ is to be found. For example, in IPCom v Lenovo Technology, ([ 2019 ] EWHC 3030 (Pat)) the scope of the order sought by IPCom did not interfere with the substantive proceedings before the US courts, and it was considered that not granting the order would have been vexatious and oppressive by depriving IPCom of its right for infringement and validity of its UK patent to be determined in the UK. Similarly, in Philips v Guangdong ([2022] EWHC 1703 (Pat)) it was held that an anti-suit injunction from the Chinese court seeking to prevent a UK court from determining infringement of a UK patent would be vexatious, oppressive, and unconscionable.
Outside the field of FRAND disputes, in Cook v Boston, ([2022] EWHC 720 (Pat) (8 March 2022) and [2022] EWHC 504 (Pat) (18 March 2022)), an ex parte anti-suit injunction was ordered against an attempted cross-border preliminary injunction from the Netherlands. In this case, before the return date, the parties agreed by consent to submit to a de-facto ASI on any cross-border claim. This generics against originator case gives a further indication of how cross-border injunctions might be approached in the future.
Can the UPC trump an English ASI with its own AASI?
The power of a UK court to issue an ASI also needs to be considered against the UPC case law on AASIs. In Avago v Realtek (UPC_CFI_755/2024, 9 December 2024), it was held that Article 32(1)(a)(c) UPC Agreement provides the UPC with jurisdiction to issue interim measures to protect against impending, foreign prohibitions on litigation and/or enforcement – that is AASIs and anti-anti-enforcement injunctions (AAEIs).
This is because such prohibitions on litigation and/or enforcement from a foreign court violate the general European right of access to justice under Article 47 of the EU Charter. In this case, the respondent sought the issuance of an ASI and an AEI before the US courts which, when ordered, would have placed a comprehensive prohibition on litigation before the UPC and a comprehensive prohibition on the enforcement of UPC decisions.
Conclusion
The consequence of the above powers, the availability of ASIs and AASIs in both the UK and UPC, may be that in some cases there is a race to obtain such relief as soon as it is known that an injunction or anti-suit injunction has been filed in the other court.
Is there a broader, more radical, solution?
In part three, should the UK consider joining the UPC?
