UPC CFI, LD Mannheim, 11 March 2025: territorial scope of the UPC and the UPCA and temporal scope of applicable law
22-05-2025 Print this page
Direct patent infringement within the territory of the UPCA member states by acts outside that territory (Article 25 UPCA): acts in the meaning of Art. 25 UPCA also encompass acts which make the infringement possible and support it, at least when such acts give the potential perpetrator control over the infringement.
Infringing acts with regard to France and Germany respectively do not suffice to extend the remedies sought to other UPCA member state (Art. 34 UPCA)
No UPC jurisdiction regarding Turkey: no single fact brought forward or apparent that may constitute an act committed within the territory of the UPCA member states and relating to a possible infringement in Turkey (Article 7(3) Brussels Regulation).
No preliminary objection required to challenge jurisdiction: suffices that the defendant raises the objection against the international jurisprudence in its first defence. Art. 26 Brussels Ia Reg. prevails over R. 19.7 RoP due to the primacy of Union Law.
UPC has jurisdiction for acts committed before the UPCA’s entry into force on 1 June 2023.
Applicable law. The determination of the substantive law applicable to an alleged infringement is to be strictly distinguished from the jurisdiction to hear the case.
With regard to traditional European bundle patents
(a) the substantive national laws of the UPCA member states applies to acts committed before the entry into force of the UPCA on 1 June 2023,
(b) the substantive law as laid down in the UPCA applies (i) to acts committed after the entry into force of the UPCA and (ii) to ongoing acts started before the entry into force of the UPCA and continued after the entry into force on 1 June 2023.
An infringing act is ongoing if the infringer continues its infringing behaviour although he could have stopped the infringement in the light of the entry into force of the new regime on 1 June 2023. However, in order to avoid potential hardship, the party concerned may rely on the provisions of the respective national law in force prior to the entry into force of the UPCA with regard to acts of past use which lie before 1 June 2023.
Unsuccessful rebuttal of presumption of ownership of the registered proprietor (R. 8.5 RoP). No doubt that the Transfer Agreement 2018 was validly concluded.
Right to information of Article 67 UPCA and Article 68 UPCA may encompass time periods which resided before the entry into force of the UPCA. The question of intertemporal applicability of a right to information and the question of the scope of the period, for which information has to be provided, have to be distinguished.
