September 2024 The Paris Central Division of the UPC considers EU Regulation No. 1215/2012 (recast) to determine that it has jurisdiction, regardless of parallel German proceedings pending for the same patent.
Nokia filed two separate revocation actions challenging Mala’s EP 2 044 709 patent, valid only in Germany. The first was filed on 29 April 2021 in the German Federal Patent Court but was unsuccessful, as the patent was upheld (appeal pending). The second was filed on 15 December 2023 in the Unified Patent Court (UPC). This article focuses on Mala’s objection to the UPC’s jurisdiction, in which they argued that since a revocation action was already ongoing in Germany, the UPC should reject Nokia’s action as inadmissible.
The main issue was whether the lis pendens rules in Articles 29–31 of the Brussels I Regulation (Regulation (EU) No 1215/2012, recast) apply to determine the relationship between the German revocation and UPC revocation proceedings. Mala argued these rules should apply, while Nokia argued they should not.
The UPC divided this issue into three main questions:
1. Direct Applicability of Articles 29–31 Brussels I Regulation
Do the lis pendens rules apply directly to the UPC revocation proceedings?
The court found that the UPC is not a “court of a Member State” under Article 29 of Brussels I, so these rules are not directly applicable. The UPC is a “common court” as per Articles 71a–71d, which set out special rules for such courts. If Articles 29–31 applied directly, the special rules for the UPC would become meaningless.
2. Applicability of Articles 29–31 in Conjunction with Articles 71a–71d Brussels I Regulation
Can the lis pendens rules be applied to the UPC proceedings in combination with the special rules for “common courts”?
The court reasoned that Article 71b does not extend the application of Article 29, as it would render Article 71c, which provides specific lis pendens rules during the UPC transitional period, meaningless. Article 71c(2) applies only during the transitional period (which started on 1 June 2023) and does not cover cases filed before this period, as was the situation in the German proceedings.
3. Application of Article 71c(2) by Analogy
Can the special transitional period rules (Article 71c(2)) apply by analogy to these proceedings?
The court rejected this by referring to the clear language of Article 71c(2), which applies strictly during the transitional period. The court also emphasized that there is no general principle preventing the UPC from asserting jurisdiction in parallel with national courts unless specific rules dictate otherwise. For example, under Article 33 UPCA, the UPC can hear revocation actions even when an opposition is pending before the European Patent Office (EPO).
Core Decision
The Paris Central Division of the UPC ruled that:
- Articles 29–31 of the Brussels I Regulation are not directly applicable to the UPC, and the special rules under Articles 71a–71d take precedence.
- The lis pendens rules do not apply to proceedings initiated before the UPC transitional period.
- The UPC has the jurisdiction to hear the revocation action against Mala’s patent, despite the ongoing German proceedings.
Additional Requests Denied
- Mala had requested that the UPC stay its proceedings until a final decision on the German revocation appeal was reached. This request was denied.
- Mala also requested a stay of proceedings until a final decision on its jurisdictional objection was issued, or alternatively, an extension of one month to file its defence. The court rejected both requests.
Implications
The UPC’s decision to assert jurisdiction in parallel with national court proceedings signals its willingness to hear cases even when national proceedings are ongoing, as long as no specific rule bars this. This is particularly important during the UPC’s transitional period, where patent holders and challengers may have interests in pursuing actions in both national courts and the UPC.
This decision has been appealed, and the profession now awaits the UPC Court of Appeal’s view, which could potentially offer a different interpretation of the jurisdictional rules and the interplay between national and UPC proceedings.
