Update: There has been a related CJEU decision. Find a thorough anaylsis here: https://www.bardehle.com/en/ip-news-k...
Link to the mentioned UPC decision of the LD Düsseldorf: CC5DDB59B23C4060B18ADA327BFB5640_en.pdf
For decades, it had been the dream of patent owners to have a one-stop solution for European patent disputes instead of fighting multiple national battles. The Unified Patent Court aims at making this possible. However, with Brexit and some EPC member states still outside the system, is the one-stop solution dead?
To anticipate the answer straight away: No, the one-stop solution is still alive – at least under certain circumstances. Let's have a quick look at the following example:
Imagine you own a European bundle patent and your competitor, based in Germany, infringes your patent in Germany and, let's say, France, but also in the UK (which is a non-UPC member state).
You could initiate three separate national infringement proceedings in Germany, France and the UK, each litigating the national parts of your European bundle patent. This could even lead to diverging national decisions.
An alternative would be to sue your competitor before the Unified Patent Court for patent infringement of the German and the French parts and to obtain a respective single judgment. But what happens to the UK part?
Well, a recent decision of the Düsseldorf Local Division of the Unified Patent Court (you will find the link below in the description of this video) ruled that if the defendant is domiciled in a Contracting Member State of the UPC (here: Germany), the UPC has jurisdiction to hear the infringement action in respect of the UK part of the patent. This applies even if the defendant has filed a counterclaim for revocation in respect of the German part of the patent. This means that you could include the UK in your infringement action before the UPC.
However, be aware that in other scenarios where defendants are domiciled in other states this "long arm jurisdiction" may not apply.
Defining the right strategy to litigate your European bundle patents in Europe requires thorough understanding of the legal framework, including the potential pitfalls associated with "your" specific scenario.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
