The scope of the jurisdiction of the UPC

In Aim Sport v Supponor the UPC Court of Appeal handed down a decision focused on the transitional provisions and the scope of the jurisdiction of the UPC and national courts. See here.

In addition to the key point of the judgment, there are two important issues now confirmed by the Court of Appeal.

The Court of Appeal extends the parallel jurisdiction of national courts

The decision sets out the Court of Appeal's view on the proper interpretation and effect of the transitional regime as a whole.

Nearly 10 years ago now I wrote an article on the uncertainties and difficulties in relation to the transitional provisions of the UPC Agreement.

Once such issue was do national courts have parallel jurisdiction in the transitional period over all actions in Art. 32 UPCA over which the UPC has exclusive competence (which covers both Unitary Patents and European Patents) or just the four actions limited to European patents explicitly identified in the transitional provision as follows:

“[...] an action for infringement or for revocation of a European patent or an action for infringement or for declaration of invalidity of a supplementary protection certificate issued for a product protected by a European patent may still be brought before national courts […]”

This bit of the Court of Appeal's decision therefore caught my eye as it extends the jurisdiction of national courts to actions not referred to in the provision:

“The Court of Appeal considers the term ‘action’ in Art. 83 UPCA to refer not only to infringement and revocation actions, but to all actions mentioned in Art. 32 UPCA over which the UPC has jurisdiction.”

Whether or not this is a sensible interpretation of that provision, it is not what the provision says and it appears to ignore the quoted part of the provision above entirely. Further, the effect of this interpretation is that national courts would have jurisdiction over unitary patents, because the actions in Art. 32 UPCA cover actions for infringement and revocation of unitary patents and actions which are limited to unitary patents only. 

The Court of Appeal confirms that the opt out removes the jurisdiction of the UPC altogether

The Court of Appeal also confirms the prevailing view that the opt-out has the effect of excluding the jurisdiction of the UPC altogether and that if not opted-out the UPC shares parallel jurisdiction with the national courts for the transitional period.

In doing so, however, the Court of Appeal has decided that parallel jurisdiction between the UPC and national courts is not conditional on an opt-out. As I wrote nearly 10 years ago, this was not an interpretation shared by everyone before the UPCA was signed. Both the European Commission, at least at one point, and a judge of the General Court, CJEU took the position that national proceedings were only possible for opted-out European patents.

On the basis of the judgment, it does not appear that these issues were the subject of the parties submissions and argument. It is therefore unclear whether and if so to what extent they were considered by the Court of Appeal.