The Milan Local Division has issued an order relating to UPC_CFI_792/2024, reiterating that the UPC has jurisdiction to decide on infringement issues relating to parts of European patents in non-UPC states (in this case Spain) where the defendant is domiciled in a UPC member state. Previous UPC decisions discussing the so-called long-arm jurisdiction of the UPC were reported in our news item here.
Whilst it comes as no surprise that the UPC has established its competency to decide on infringement issues for Spanish validations of granted European Patents (provided the defendant is domiciled in a contracting member state), that does not mean that the consequences will be predictable. Many will recall that Spain challenged the establishment of the UPC with two referrals to the CJEU and two subsequent appeals based on the use of the enhanced cooperation agreement and the proposed trilingual language of the court. Both the initial actions and the appeals were dismissed by the CJEU. As the situation now stands Spain is a signatory of the European Patent Convention (EPC) and an EU member but has not signed the international treaty that underpins the UPC system (the Unified Patent Court Agreement (UPCA)).
It creates an intriguing situation where Spain finds jurisdiction of its own patents subject to legislation by an external court without ever exchanging any signatures on the matter. The UK also finds itself in a similar situation but must admit to having a greater hand in the development of the UPC than Spain.
With the UPC seeking to exercise extra-territorial influence over non-participating territories, we may well see protective measures being sought in those territories such as anti-suit injunctions. However, it remains to been seen if such anti-suit injunctions will be sought, let alone granted.
It also remains to be seen how enforcement of orders issued by the UPC will be perceived by the Spanish courts. There is the potential for the Spanish national courts to request a preliminary ruling from the CJEU regarding an order issued by the UPC on infringement in Spain. Potential grounds for such a request could include Article 41(1) of the TRIPS agreement. In particular, that Article provides that "[m]embers shall ensure that enforcement procedures as specified in this Part are available under their law so as to permit effective action against any act of infringement of intellectual property rights covered by this Agreement" (emphasis added). There is a potential argument that the UPC deciding on infringement issues prevents Spain from enforcing its own law. Any request for a preliminary ruling brought by the Spanish national courts could have the potential to slow down significantly the proceedings from which the referral arises.
Currently all of the UPC decisions relating to long-arm jurisdiction have been issued in first instance proceedings. It therefore waits to be seen if these decisions will be upheld on appeal. We will be keeping a close eye on these potential developments and will report as they arise.
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