In an important order on the international jurisdiction of the Unified Patent Court, the Court of Appeal clarified the limits of UPC jurisdiction over alleged infringements of national parts of European patents outside UPC territory. The Court held that jurisdiction based on Art. 7 (2) of Regulation (EU) No. 1215/2012 (Brussels I Recast) is limited to damage occurring within UPC territory and does not extend to alleged infringements in non-UPC states.
The decision also emphasises the need for claimants to properly substantiate the Court’s international jurisdiction already in the statement of claim, in particular where reliance is placed on Art. 71 b (3) Brussels I Recast.
Keeex brought an infringement action before the Paris Local Division against several technology companies including Adobe, OpenAI and others concerning EP 2 949 070 relating to the verification of integrity and authenticity of digital data blocks.
The defendants raised preliminary objections challenging both the internal and international jurisdiction of the UPC. The Paris Local Division rejected these objections and accepted jurisdiction also for alleged infringements concerning the Swiss, Spanish, British, Irish, Norwegian and Polish parts of the patent.
Several defendants appealed. The Court of Appeal set aside the first-instance decision insofar as it accepted jurisdiction for non-UPC territories.
The Court first confirmed that the UPC’s international jurisdiction must be determined in accordance with Art. 31 UPCA in conjunction with Regulation (EU) No. 1215/2012.
Referring to established CJEU case law such as Fiona Shevill and Pez Hejduk, the Court reiterated that jurisdiction based on the place where the harmful event occurred under Art. 7 (2) Brussels I Recast is territorially limited. A court seised on this basis may only rule on damage occurring within the territory to which that connecting factor relates.
The Court therefore rejected the Paris Local Division’s interpretation that the CJEU’s BSH v Electrolux judgment could justify a broader jurisdictional reach irrespective of whether jurisdiction was based on Art. 4 or Art. 7 (2) Brussels I Recast. According to the Court of Appeal, this amounted to an incorrect interpretation of the applicable law.
Consequently, where UPC jurisdiction is based solely on Art. 7 (2) Brussels I Recast, it is limited to alleged infringement within UPC territory.
The Court also addressed Art. 71 b (3) Brussels I Recast, which may allow a common court such as the UPC to exercise jurisdiction over damage occurring outside the European Union under certain conditions.
The Court clarified that this provision presupposes that the UPC already has jurisdiction for infringement within UPC territory. Only then may the Court potentially exercise ancillary jurisdiction over damage caused outside the Union.
However, the Court emphasised that this requires in particular that:
The Court found that the statement of claim contained no sufficient factual or legal substantiation of these requirements. In particular, it did not contain any explanation regarding the presence of relevant assets within UPC territory.
The Court left open whether Art. 71 b (3) Brussels I Recast could in principle justify jurisdiction for infringement of national patent parts outside UPC territory.
Beyond the concrete jurisdictional issues, the decision contains important procedural guidance on pleading requirements.
The Court stressed that under Rule 13.1(i) RoP the statement of claim must contain the legal and factual elements necessary to establish the Court’s competence. This requirement also reflects the UPC’s front-loaded procedural system and the parties’ duty to present their full case at an early stage.
Where a claimant seeks to extend UPC jurisdiction to non-UPC territories, the statement of claim must therefore already contain the necessary factual and legal explanations, including the requirements of Art. 71 b (3) Brussels I Recast.
This deficiency could not be remedied by later submissions or exhibits filed only in response to the defendants’ objections.
Finally, the Court clarified that national jurisdiction provisions such as Art. 14 of the French Civil Code are not applicable before the UPC. As a common court of the Member States, the UPC applies the jurisdictional regime of Regulation (EU) No. 1215/2012 rather than national private international law rules.
The Court of Appeal therefore set aside the order of the Paris Local Division insofar as it had accepted jurisdiction for alleged infringement of the Swiss, Spanish, British, Irish, Norwegian and Polish parts of the patent. The Court confirmed that it had no jurisdiction in this respect.
