Recent UPC Decisions: Suspension in the case of parallel opposition and Jurisdiction for the UK part of an EP patent

Suspension in the case of parallel opposition

In a recent decision (Meril vs. Edwards), the Court of Appeal of the UPC ruled that UPC proceedings may be suspended if a parallel opposition against the same European patent is pending. Despite the UPC framework being designed to enable efficient and fast proceedings, the decision seems to favor suspension of the proceedings in the case of a pending opposition before the EPO in order to avoid contradicting decisions, in particular scenarios in which the UPC finds that the asserted patent has been infringed and rules against the defendant and the EPO later revokes the patent in the opposition proceedings.

Jurisdiction for the UK part of an EP patent

In a recent ruling (FUJIFILM vs. Kodak), the Düsseldorf Local Division of the UPC declared that it had jurisdiction over an infringement action relating to a UK part of a European patent, even though the UK is not a contracting member state of the UPC and is not even a member state of the European Union. In particular, the Düsseldorf Local Division ruled with reference to provisions of the Brussels I Regulations according to which persons resident in a Member State shall be sued in the courts of the Member State.

In the case at hand, all defendants were resident in Germany. Nevertheless, the Local Division declined to grant damages for infringement of the UK part of the patent, reasoning that it lacked jurisdiction to assess validity in the UK. Thus, this decision illustrates both the long arm of the UPC in infringement matters and its limitations when it comes to granting damages.

Legal notice:

This report provides information on legal issues and developments of interest in the field of intellectual property. No claim is made as to the completeness of this report. This report does not constitute legal advice and no liability is assumed. Since intellectual property laws and systems are multi-faceted and intricate, we recommend obtaining professional advice regarding any problem or matter before taking action with respect to any information contained in this report.

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