1. Key takeaways
The UPC does not have jurisdiction to revoke the validated national part of a European Patent in relation to the United Kingdom with erga omnes effect
According to the ECJ's ruling in BSH Hausgeräte, the court of the Member State of the European Union in which the defendant is domiciled (Article 4(1) Brussels Ia Regulation) does have jurisdiction to rule on an infringement action based on a patent granted or validated in a Non-EU member state even if the invalidity of this patent is raised as a defence. Still, there is no jurisdiction for a defence which seeks to affect the existence or content of that patent in that third state, or to cause its national register to be amended.
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 the validity as a mere prerequisite for infringement.
There is no legitimate interest of a defendant obtaining
a declaration that the UK part
of a European bundle patent is invalid
There is no legitimate interest, since such declaratory relief is not binding on the national authorities.
2. Division
Local Division Mannheim
3. UPC number
UPC_CFI_359/2023
4. Type of proceedings
Infringement and Counterclaim for revocation proceedings
5. Parties
CLAIMANT:
FUJIFILM
DEFENDANTS:
Kodak Holding GmbH
Kodak GmbH
Kodak Graphic Communications GmbH
6. Patent(s)
EP 3 476 616 (parallel proceedings: EP 3 511 174)
7. Jurisdictions
UPC and UK
8. Body of legislation / Rules
Art. 4(1) Brussels Ia Regulation; Art. 71b Brussels Ia Regulation; Art. 31 UPCA; 34 UPCA
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.
