The Unified Patent Court (UPC) has demonstrated its willingness to assert long-arm jurisdiction in a groundbreaking decision, extending its authority to address acts of patent infringement occurring outside the European Union, including the UK. The case, which involved claims of infringement across multiple jurisdictions, highlights both the UPC’s strategic role in transnational patent enforcement and its potential impact on global IP disputes.
In the decision (Case No. UPC_CFI_376/2023), the Local Division ruled on alleged patent infringement in the UK, despite the country's withdrawal from the European Union and its non-participation in the UPC system. The court asserted jurisdiction based on the following:
The court found that because the alleged infringer operated in several EU jurisdictions covered by the UPC, it was appropriate to adjudicate all related claims, including those outside the immediate purview of the UPC Agreement (UPCA). This aligns with Article 71(b) of the Brussels Ibis Regulation, which permits jurisdiction over related claims to ensure efficient and coherent cross-border enforcement.
By including UK-based infringements within the scope of proceedings, the UPC has set a precedent that could complicate litigation strategies for parties with operations in both the UK and UPC member states. Patent holders – according to this decision - have a centralized forum to pursue coordinated enforcement, while defendants may face consolidated claims even for actions outside the UPC's “direct” territorial reach.
Beyond jurisdictional matters, the court discussed claim interpretation in light of the description and the remaining claims. Based on the principle of legal certainty and of primacy of the claims underlying Art. 69 EPC and its Protocol, the terms used in a claim should normally be given their broadest technically sensible meaning in the context of the claim in which they appear. A narrowing interpretation of the claims which deviates from the broader general understanding of the terms used therein by a skilled person can only be permitted if there are convincing reasons based on the circumstances of the individual case in question. In addition, generally, the scope of a patent claim should not be construed such that it is limited by features that are only provided by a subsequent dependent claim.
