Keeping it simple: lodging infringement claims in the UPC
The parties in a dispute are free to agree between them in which division of the Unified Patent Court (UPC) an action takes place. In the absence of such agreement, article 33 of the UPC Agreement provides the rules on the division of the court of first instance in which an action, and possible counterclaims, must be lodged.
Although this article is principally concerned with infringement actions, it should be noted that the jurisdictional rules under article 33(1) that apply to infringement actions also apply to a number of other actions. These are: actions for provisional and protective measures; actions for damages and compensation derived from the provisional protection conferred by a published European patent application; and actions relating to the use of the invention before the granting of the patent, or to the right based on earlier use of the invention.
There are two key scenarios most likely to arise in the UPC. The first is when there is an actual or threatened infringement that occurs, or may occur, in a contracting member state that hosts a local division or participates in a regional division; and the defendant’s domicile is in a contracting member state that hosts a local division or participates in a regional division (the word “domicile” is used here as shorthand for the defendant’s residence or principal place of business or, in the absence of residence or principal place of business, its place of business). In this scenario, the action may be brought in either:
- The local or regional division of the contracting member state of the defendant’s domicile; or
- The local or regional division of the contracting member state where the actual or threatened infringement has or may occur.
This presents the claimant with a choice of forum in which to lodge the action, and possibly a number of choices if the infringement is taking place in more than one member state that is contracted to the UPC.
The second scenario is when an actual or threatened infringement occurs, or may occur, in a contracting member state that hosts a local division or participates in a regional division, but the defendant is domiciled outside the territory of the contracting member states. In this situation, the defendant’s domicile is no longer a factor in choosing forum.
The action may be brought in the local or regional division of the member state where the actual or threatened infringement takes place, or in the central division. The claimant still has a choice available to it and, again, the more member states represented by a local or regional division in which the infringement takes place, the more options for the claimant there are.
Subsequent actions
What happens if a claim to one of the actions to which article 33(1) applies—infringement of a patent and/or supplementary protection certificate, provisional and protective measures, damages and compensation derived from the provisional protection, etc—is followed by a further such claim? If subsequently, another one of these actions is lodged between the same parties and concerning the same patent, the subsequent actionmust be brought before the same division as the first action. In particular, note that a party that has brought an action for infringement of patent A in contracting member state X cannot later seek an injunction against the same defendant on the same patent in member state Y and vice versa; the action must be lodged in the same division.
“A claimant in an infringement action against party X may need to lodge a separate action against party Y in another division (subject to rule 340).”
Furthermore, what happens when an infringement action is lodged after a revocation claim in the central division between the same parties and concerning the same patent? In this situation there is a choice of division. First, the infringement action may be lodged in the central division together with the revocation claim. Or second, the infringement action may be lodged in a local or regional division according to the domicile and place of infringement already discussed above.
If the infringement action is lodged in a local or regional division, there is now a split forum between actions which concern the same parties and the same patent. In this situation, the split forum becomes subject to a decision whether to join the actions or keep them separate. This important feature of UPC jurisdiction—whether to join or bifurcate revocation and infringement actions—will be addressed in a later article.
Avoiding multiple actions
There are a number of measures in the UPC for avoiding duplication of actions, simplifying actions, or increasing the efficiency with which related actions are heard in the court. For example, duplication of actions could arise if an action between the same parties on the same patent were brought before several different divisions. However, article 33(2) of the agreement ensures that, if this happens, it is the division first seized that is competent to hear the whole case and the other divisions must declare it inadmissible. However, actions that concern the same patent, in which there is no identity of the parties, may proceed in different divisions. So a claimant in an infringement action against party X may need to lodge a separate action against party Y in another division (subject to rule 340, below).
Where allegedly infringing activity affects territories represented by three or more regional divisions, a defendant can request that the action is transferred to the central division. It is not open to the claimant to request this transfer.
Furthermore, where a claimant faces the prospect of pursuing more than one defendant in more than one division, if the defendants have “a ‘commercial relationship’ and the action relates to the same alleged infringement”, article 33(1)(b) says the action may be brought against all the defendants in the place of domicile of one of them. This consolidation provision applies only to infringement actions and other actions referred to in article 33(1) (above).
There is another possibility: for the “proper administration of justice” and “avoiding inconsistent decisions”, rule 340 of the Rules of Procedure provides that actions concerning the same patent, whether or not between the same parties, may be heard together by agreement between the parties “on account of the connection between them”.
Rule 340 is in some ways drafted in more general terms than the multiple defendants rule in article 33(1)(b). For example, it applies to revocation actions concerning the same patent. It allows these to be heard together—whether or not the claimants in those actions are commercially related—providing the parties agree to it. Rule 340 may also be applied to infringement cases where the multiple defendants rule fails because the actions do not have a sufficiently close commercial relationship.
However, the effect of rule 340 is different: article 33(1)(b) allows defendants to be joined in a single action, whereas rule 340 merely provides for actions to be heard together. Nonetheless, this may be of considerable practical benefit to a patentee or exclusive licensee that is enforcing a patent against a number of defendants in a number of separate actions.
The difficult question, at this early stage, is what is meant by the words “on account of the connection between them” for the purpose of the rule 340? And what does it mean when it says “to avoid inconsistent decisions”? These terms may refer simply to situations in which the same patent is at issue, but they may also require that the same acts of infringing activity are taking place with the same product.
Similar questions arise about the application of the multiple defendants rule to cases where there is the “same alleged infringement”. Does this mean the same product is infringing the same patent? Cases from the Court of Justice of the European Union concerning cross-border infringement in similar scenarios suggest this.
They also suggest that multiple defendants have a “commercial relationship” when they are members of the same company. Unfortunately, accurate answers to how these rules are to be applied in the UPC must be worked out by the judges when the system is in force.
Paul England is a senior associate at Taylor Wessing. He can be contacted at: p.england@taylorwessing.com
