Does the UPCA apply in infringement proceedings based on European Patents?
Written By
Partner
Germany
Based in Düsseldorf, at the seat of one of the most important patent infringement courts in Europe, I am partner in our Intellectual Property Practice Group and a patent practitioner with a focus on specialist technical areas.
Associate
Germany
As a lawyer in our IP practice group, I advise our national and international clients on all aspects of patent law from our office in Dusseldorf. My work is focused on patent infringement proceedings.
Since the Agreement on a Unified Patent Court (UPCA) has come into force and the Unified Patent Court (UPC) has opened its doors on June 1, 2023 respectively, technical issues with the Case Management System (CMS), the first orders and decisions of the UPC as well as new legal challenges are the daily business of the European patent community. One of these legal challenges is whether the UPCA is applicable in infringement proceedings based on European patents (EPs).
Prior to the start of the UPC, the national courts in proceeding for alleged infringement of a national part of an EP (of course) applied the national law to the respective national part of the EP. However, since the UPCA entered into force, it is not certain anymore whether in infringement proceedings based on EPs, the UPCA or national law applies. This uncertainty arises in two scenarios, namely in (1) national infringement proceedings based on an EP (opted-out or not) and (2) a UPC infringement proceeding based on an EP (which was not opted out or for which the opt-out has been withdrawn).
According to Art. 3 lit. c UPCA the UPCA “shall apply to any European patent […], without prejudice to Art. 83 UPCA.” In view of this, it could be argued that the UPCA and therefore its substantive provisions in Artt. 25 seq. UPCA must be applied in both, national and UPC litigation.
However, the Higher Regional Court Karlsruhe (HRC) recently ruled that the UPCA does not apply in national infringement proceedings based on the German part of an EP (Judgment of February 14, 2024, Case No. 6 U 232/22). In a nutshell, the HRC reasons that the UPCA exclusively addresses the UPC but not the national courts of the contracting member states of the UPCA (cf. Artt. 56 seq., Art. 24 para 1 lit. b) and Art. 2 lit. a UPCA). Thus, regarding scenario (1) the HRC…
