As we have previously reported here, the CJEU (C-339/22) confirmed earlier this year that the EU Unified Patents Court (UPC) has jurisdiction to decide on claims for infringement of patents in non-UPC states (such as the UK), but not to revoke them for invalidity.
Following this CJEU decision, in a continuation of its earlier decision (UPC_CFI_359/2023)the UPC Mannheim Local Division has granted the patentee Fujifilm Corporation a UK injunction against Kodak under its European patent number EP 3511174 (UPC_CFI_365/2023).
The key points of the Mannheim LD decision are:
- The UPC has jurisdiction to decide upon the infringement of the UK part of a European Patent. However, the UPC does not have jurisdiction to revoke the validated national part of a European Patent in relation to the United Kingdom.
- The defendant in an infringement action before the UPC, which relates to the UK part of a European bundle patent, is allowed to raise an invalidity defence without being obliged to file a national action for revocation in the UK. The UPC will then assess validity as a mere prerequisite for infringement. The outcome of the infringement action before the UPC has inter partes effect only.
- In the absence of pending national revocation proceedings in the UK, there is neither a reason to stay the infringement proceedings before the UPC, nor to make the decision conditional upon the validity of the UK part of the European patent.
- There is no legitimate interest in a defendant obtaining a declaration that the UK part of a European bundle patent is invalid, since such declaratory relief is not binding on the national authorities.
Comment:
Whilst the decision isn't a surprise following the earlier CJEU decision, some practitioners are commenting on its poor "optics": a UK-specific case in a non-UK court granting UK-specific injunctive relief (viz, an EU court imposing a UK legal judgement post-Brexit in a case in which UK lawyers are not allowed to act (unless they happen to be EP Patent Attorneys)).
However, others have pointed out that there is presumably no reason a similar judgment could not be obtained from a UK court, with the same "optics", and that perhaps UK judges will now be increasingly willing to grant cross-border injunctions on EP patents. It will be interesting to see how UK judges respond...it's already been suggested that a well-known former UK patent judge may be dusting off his robe for a comeback as we speak...
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