The proverb says: “All roads lead to Rome.” This is probably meant to allude to the fact that Rome was considered the political, economic, and cultural center in ancient times. Whether the future Unified Patent Court (UPC) will become the center of patent law remains to be seen. Various roads are leading there.
Jurisdiction of the Unified Patent Court
When the parties to a lawsuit have their domiciles or seats in different countries, in a first step, the rules on international jurisdiction determine which courts of which state are competent to hear and decide such cross-border disputes.
The Brussels Regulation and the Lugano Convention
To determine international jurisdiction, the UPC applies Art. 31 Unified Patent Court Agreement (UPCA), which refers to Regulation (EU) No. 1215/2012 (Brussels Regulation) or, where applicable, to the Convention on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (Lugano Convention).
According to the general principle of jurisdiction, defendants are sued at their domicile or, as regards companies, their statutory seat, central administration or principal place of business (cf. Art. 63 Brussels Regulation).
To determine general jurisdiction, we have to distinguish between different groups of countries.
Persons domiciled in an EU Member State can be sued in the courts of that Member State (cf. Art. 4 (1) Brussels Regulation). In case such EU Member State also participates in the UPCA, the UPC replaces the national courts (cf. Art.71a (1), (2) (a), Art. 71b (1) Brussels Regulation) and the lawsuit can be filed with the UPC.
In contrast, persons domiciled in an EU Member States which is not a Contracting Member State of the UPCA (namely Croatia, Poland, and Spain) can only be sued in their respective national courts (Art. 4 (1) Brussels Regulation) based on general jurisdiction, because Art. 71b (1) Brussels Regulation does not apply to them.
The same applies to persons domiciled in a Member State of the Lugano Convention. Persons domiciled in Iceland, Norway, or Switzerland can be sued in the courts of that respective state (cf. Art. 2 (1) Lugano Convention) based on general jurisdiction. Art. 71b Brussels Regulation again does not apply and there is no corresponding provision in the Lugano Convention.
Finally, for defendants domiciled outside the EU and the Lugano area (so called 3rd States), jurisdiction is generally determined under the rules of national law (cf. Art. 6 (1) Brussels Regulation / Art. 4 (1) Lugano Convention).
In a nutshell, general jurisdiction of the UPC can only be established in case the defendant is domiciled in a Member State of the UPCA (and thus also in the European Union).
In practice, the establishment of jurisdiction based on the general jurisdiction as described above, which results solely from the domicile of the defendant, is rather rare as the so-called special jurisdiction applies in most cases. With regard to special jurisdiction, there are case groups that may be available to the plaintiff for a particular subject-matter. The most relevant provisions on special jurisdictions are
- Art. 7 (2) Brussels Regulation / Art. 5 (3) Lugano Convention, according to which the defendant can be sued at the place where the harmful event occurred or may occur; and
- Art. 8 (1) Brussels Regulation / Art. 6 (1) Lugano Convention, according to which –under specific conditions, namely a close connection between the claims – multiple defendants can be sued in the country where only one of them (the "anchor defendant") is domiciled.
Let’s have a look at the different groups of countries once more:
To defendants domiciled in the European Union, Art. 7 (2) Brussels Regulation applies, i.e., a person domiciled in a Member State of the European Union may be sued in a different Member State of the European Union if the European Patent was infringed in such different state. This applies irrespective of whether the Member State where the defendant is domiciled also participates in the UPCA (for example, in case the defendant is domiciled in Spain and the European Patent is infringed in Germany).
The distinction between UPCA Member States and non-UPCA Member States becomes relevant, however, when determining whether jurisdiction of the UPC can be established under Art. 7 (2) Brussels Regulation. According to Art. 71b (1) Brussels Regulation, the UPC takes the place of the national courts of the respective Member State of European Union only if said Member State also participates in the UPCA.
To illustrate this, let’s have a look at a specific exemplary case:
If defendant E is domiciled in Spain and offers and sells patent infringing goods in Germany, the lawsuit can be filed before the UPC: According to Art. 7 (2) Brussels Regulation, the German courts have jurisdiction and Art. 71b (1) Brussels Regulation provides that the UPC replaces the national German courts.
If, however, E offers and sells its goods only in Poland, the UPC does not have jurisdiction as Poland is not a Contracting Member State of the UPCA and therefore Art. 71b Brussels Regulation does not apply.
In case the defendant is domiciled in a Member State of the Lugano Convention, e.g. Switzerland, according to Art. 5 (3) Lugano Convention, a suit for patent infringement can be filed in the courts of a different country bound by the Lugano Convention (i.e. Iceland, Norway, or a Member State of the European Community) where the infringement occurred or may occur. Although there is no provision corresponding to Art. 71b Brussels Regulation in the Lugano Convention, Art. 67 (1), (2) Lugano Convention acknowledges that countries bound by the Lugano Convention also conclude agreements concerning jurisdiction and does not prevent a court of such a country from assuming jurisdiction under such agreement. In other words, the Lugano Convention does not prevent jurisdiction of the UPC if the patent infringement occurs in a country that is a UPCA Member State and which thus conferred jurisdiction to the UPCA under Art. 71b (1) Brussels Regulation.
In an exemplary case, defendant S is domiciled in Switzerland and infringes a European Patent in Germany. In this case, S can be sued before the UPC as the German national courts would have jurisdiction, according to Art. 5 (3) Lugano Convention, and the German national courts may confer jurisdiction to the UPC under Art. 71b (1) Brussels Regulation, according to Art. 67 (1), (2) Lugano Convention.
In case the defendant is domiciled in a non-member state, according to Art. 71b (2) Brussels Regulation, the provisions on jurisdiction of the Brussels Regulation apply irrespective of the defendant’s domicile. This means that even defendants domiciled outside the European Union (for example in Turkey or the US) may be sued before the UPC in case the harmful event, i.e., the patent infringement, occurred in a UPCA Member State.
In this scenario, Art. 71b (3) Brussels Regulation provides for a further extension of jurisdiction referred to as “long-arm jurisdiction”. According to Art. 71b (3) Brussels Regulation, the UPC may – under certain prerequisites – take into account losses arising outside the UPC area.
For more information about the Unified Patent Court and the Unitary Patent, please visit our dedicated UPC page.