“THE UNITARY PATENT AND THE UNIFIED PATENT COURT: A PRIVATE INTERNATIONAL LAW PERSPECTIVE” Prof Dr Paul L.C. Torremans School of Law University of Nottingham

CH. VI INT. JURISDICTION AND COMPETENCE Article 31 Unified Patent Court Agreement: International jurisdiction The international jurisdiction of the Court shall be established in accordance with Regulation (EU) No 1215/2012 or, where applicable, on the basis of the Convention on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (Lugano Convention)

ARTICLE 89 ENTRY INTO FORCE  1. This Agreement shall enter into force on 1 January 2014 or on the first day of the fourth month after the deposit of the thirteenth instrument of ratification or accession in accordance with Article 84, including the three Member States in which the highest number of European patents had effect in the year preceding the year in which the signature of the Agreement takes place or on the first day of the fourth month after the date of entry into force of the amendments to Regulation (EU) No 1215/2012 concerning its relationship with this Agreement, whichever is the latest.  2. …

‘CLARIFYING’ THE BRUSSELS I REGULATION  Regulation 542/2014  Article 1: In Chapter VII of Regulation (EU) No 1215/2012, the following Articles are inserted: Articles 71 (a) to (d)

ARTICLE 71 (A) 1. For the purposes of this Regulation, a court common to several Member States as specified in paragraph 2 (a ‘common court’) shall be deemed to be a court of a Member State when, pursuant to the instrument establishing it, such a common court exercises jurisdiction in matters falling within the scope of this Regulation. 2. For the purposes of this Regulation, each of the following courts shall be a common court: (a) the Unified Patent Court established by the Agreement on a Unified Patent Court signed on 19 February 2013 (the ‘UPC Agreement’); and (b) the Benelux Court of Justice established by the Treaty of 31 March 1965 concerning the establishment and statute of a Benelux Court of Justice (the ‘Benelux Court of Justice Treaty’).

ARTICLE 71 (B) The jurisdiction of a common court shall be determined as follows: (1) a common court 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; (2) where the defendant is not domiciled in a Member State, and this Regulation does not otherwise confer jurisdiction over him, Chapter II shall apply as appropriate regardless of the defendant’s domicile. Application may be made to a common court for provisional, including protective, measures even if the courts of a third State have jurisdiction as to the substance of the matter; (3) where a common court has jurisdiction over a defendant under point 2 in a dispute relating to an infringement of a European patent giving rise to damage within the Union, that court may also exercise jurisdiction in relation to damage arising outside the Union from such an infringement. Such jurisdiction may only be established if property belonging to the defendant is located in any Member State party to the instrument establishing the common court and the dispute has a sufficient connection with any such Member State.

QUESTIONS Paragraph 1  Common court shall have jurisdiction – merely also? Or only the common court?  Article 24(4) exclusive jurisdiction – 2 courts during the 7 year transition period???  UPC judgment covers necessarily all designations (what if national court already dealt with one?)

QUESTIONS (2) Paragraph 2  Subject matter jurisdiction without domicile by way of clarification???  Harassement risk  Concurrent exclusive jurisdiction???  Gat v Luk cannot stand  Two versions of a multiple defendant provision

QUESTIONS (3) Paragraph 3  All-in one court (sensible, but draft was anything but sensible)  Property in MS + value not insignificant compared to value of claim = jurisdiction  Complete power grab / comity / wrong example  Worrying if only

ARTICLE 71C 1. Articles 29 to 32 shall apply where proceedings are brought in a common court and in a court of a Member State not party to the instrument establishing the common court. 2. Articles 29 to 32 shall apply where, during the transitional period referred to in Article 83 of the UPC Agreement, proceedings are brought in the Unified Patent Court and in a court of a Member State party to the UPC Agreement.

LIS PENDENS DOES WONDERS… OR DOES IT?  Same cause of action  Different designations  Infringement/validity/negative declaration

ARTICLE 71D This Regulation shall apply to the recognition and enforcement of: (a) judgments given by a common court which are to be recognised and enforced in a Member State not party to the instrument establishing the common court; and (b)judgments given by the courts of a Member State not party to the instrument establishing the common court which are to be recognised and enforced in a Member State party to that instrument. However, where recognition and enforcement of a judgment given by a common court is sought in a Member State party to the instrument establishing the common court, any rules of that instrument on recognition and enforcement shall apply instead of the rules of this Regulation.’.

BACK TO UPC: COMPETENCE  Article 32  Competence of the Court  1. The Court shall have exclusive competence in respect of:  (a) actions for actual or threatened infringements of patents and supplementary protection certificates and related defences, including counterclaims concerning licences;  (b) actions for declarations of non-infringement of patents and supplementary protection certificates; …

ARTICLE 33 Article 33 Competence of the divisions of the Court of First Instance 1. Without prejudice to paragraph 7 of this Article, actions referred to in Article 32(1)(a), (c), (f) and (g) shall be brought before: (a) the local division hosted by the Contracting Member State where the actual or threatened infringement has occurred or may occur, or the regional division in which that Contracting Member State participates; or (b) the local division hosted by the Contracting Member State where the defendant or, in the case of multiple defendants, one of the defendants has its residence, or principal place of business, or in the absence of residence or principal place of business, its place of business, or the regional division in which that Contracting Member State participates. An action may be brought against multiple defendants only where the defendants have a commercial relationship and where the action relates to the same alleged infringement.

Actions referred to in Article 32(1)(h) shall be brought before the local or regional division in accordance with point (b) of the first subparagraph. Actions against defendants having their residence, or principal place of business or, in the absence of residence or principal place of business, their place of business, outside the territory of the Contracting Member States shall be brought before the local or regional division in accordance with point (a) of the first subparagraph or before the central division. If the Contracting Member State concerned does not host a local division and does not participate in a regional division, actions shall be brought before the central division. 2. If an action referred to in Article 32(1)(a), (c), (f), (g) or (h) is pending before a division of the Court of First Instance, any action referred to in Article 32(1)(a), (c), (f), (g) or (h) between the same parties on the same patent may not be brought before any other division. If an action referred to in Article 32(1)(a) is pending before a regional division and the infringement has occurred in the territories of three or more regional divisions, the regional division concerned shall, at the request of the defendant, refer the case to the central division.

In case an action between the same parties on the same patent is brought before several different divisions, the division first seized shall be competent for the whole case and any division seized later shall declare the action inadmissible in accordance with the Rules of Procedure. …

ARTICLE 34  Decisions of the Court shall cover, in the case of a European patent, the territory of those Contracting Member States for which the European patent has effect.

CONCLUSION