Does the UPCA apply in infringement proceedings based on European Patents?
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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or not) and (2) a UPC infringement proceeding based on an EP (which was not opted out or for which the opt-out has been withdrawn).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 Karlsruhe has thrown its hat into the ring that German national courts should continue to apply German patent law to the German parts of EP patents. However, this is only a first decision, and it remains to be seen whether the other German patent infringement courts and in particular the German Federal Supreme Court as well as the national infringement courts in the other contracting member states of the UPCA will follow.
Regarding scenario (2), the UPC has not yet decided whether the UPCA is applicable in infringement proceedings based on EPs or the national laws of the contracting member states of the UPCA in which the respective EP is validated. The UPCA itself does not provide ultimate clarity on this issue because Art. 24 para 1 UPCA names both, the UPCA and national law as sources for the decisions of the UPC. Further, an EP maintains to be a bundle of national patents. However, it would place a not insignificant burden on the parties if they had to present all national laws in a UPC litigation based on an EP and on the UPC to analyse all of them. However, if different laws applied depending on the forum, this would give the plaintiff the opportunity to control whether national law or the UPCA applies by choosing the forum, at least in cases in which the EP was not opted-out.
We will monitor the further developments and will keep you posted, so stay tuned.