The Paris Local Division dealt with infringement of a European patent with unitary effect and additional national validations including Switzerland. The patent had been unconditionally limited during the UPC proceedings. The Court upheld the patent in its limited form and found infringement within the UPC territory. Of particular interest are the temporal effect of the limitation and the consequences for enforcement of the Swiss national part.
The Court held that the unconditional limitation of the Unitary Patent took effect retroactively from the date of grant of the European patent. The limited claim set therefore governed the assessment of infringement in the UPC territory for the entire period since grant, not only from the date on which the limitation was introduced into the proceedings. Arguments based on legal certainty for acts committed before the limitation were not accepted.
The Court drew a strict distinction between the Unitary Patent and the Swiss part of the European patent. Infringement of the Swiss national part had to be assessed on the basis of the patent as granted, since the limitation concerned only the Unitary Patent and did not affect the Swiss validation.
However, the Court did not go on to assess Swiss infringement. It reasoned that the patent, in its granted form, faced a non-negligible risk of revocation before the competent Swiss authorities in light of the proprietor’s decision to unconditionally limit the Unitary Patent. At the same time, the UPC has no jurisdiction to decide on the validity of the Swiss part. In this situation, the Court considered it inappropriate to rule on infringement of the Swiss part and rejected that part of the case.
In detail, the Court indicated that, where a serious validity risk exists for a non-UPC designation, the proper course would in principle be to stay the infringement assessment pending a decision by the courts of the state of grant. In the present case, however, no revocation action was pending in Switzerland. The Court therefore considered a stay not possible and, instead of suspending the Swiss part of the case, dismissed it outright. This approach effectively turns the absence of parallel Swiss validity proceedings into a reason not to exercise long-arm jurisdiction, leaving the proprietor without a UPC ruling on Swiss infringement despite the UPC having otherwise accepted long-arm competence in principle.
The decision shows that a limitation that strengthens the patent position within the UPC territory may at the same time weaken the prospects of long-arm enforcement for non-UPC states, because it accentuates the divergence between the limited UP claim set and the still unamended national claims.
A potential solution to such a situation may be to seek limitation centrally before the EPO under Art. 105b EPC, so that the amended claim set also governs the non-UPC validations.
