The unified patent does not currently apply in the Czech Republic – Does it really not affect me?

The Czech Republic and Slovakia are planning to join the unified patent (UP) scheme. Their governments have signed all the necessary treaties. They have just postponed ratification for the time being. It is not yet possible to obtain a UP in the Czech Republic and Slovakia. Does this mean that this issue is not relevant to us? Practice shows that it does not. The Unified Patent Court (UPC) has said that it wants to be able to rule on patent infringements that take place outside the territory covered by the UP. That is including the Czech Republic or Slovakia. This is clear, for example, from a recent decision of the UPC, which declared that it has jurisdiction to address patent infringement also in the UK – a country not subject to the UP scheme, just like the Czech Republic and Slovakia.

In the first instance proceedings, the Unified Patent Court addressed a patent dispute between FUJIFILM Corporation and several companies in the KODAK Group. FUJIFILM asserted rights against KODAK for alleged infringement of European Patent No. EP 3594009 B1.[1]

Pursuant to Article 34 of the Unified Patent Court Agreement (UPCA),[2] decisions concerning the European patent apply only in the territory of the Member States participating in the UP scheme. However, the UPC does not only adjudicate disputes arising from UPs, but also disputes concerning original non-unified European patents. Thus, under Article 34 of the UPCA, UPC’s decisions are to have effect only with respect to unified patent states, even if they concern non-unified patents.[3] There are 18 UP states and 39 non-unified European patent states.

However, the UPC, through its local division in Düsseldorf, concluded that Article 34 UPCA only determines the inward effects of its decision – i.e., what effects it produces within the unified patent territory. Hence, Article 34 does not restrict the court’s power to decide issues externally, i.e. outside the unified patent states.

The key point, as the UPC believes, is that UPC’s international jurisdiction is determined under Article 31 UPCA in accordance with the Brussels I bis Regulation.[4] International jurisdiction is thus not determined by the narrower Article 34 UPCA, but by the EU regulation regulating jurisdiction.

Article 4(1) of the Brussels I bis Regulation states that a person – regardless of their nationality – established in a Member State may be sued in that Member State.

Since all the companies on KODAK’s side were established in Germany, UPC had jurisdiction in this patent infringement dispute, both for the non-unified European patent valid in Germany, and in the UK, i.e. it had jurisdiction to adjudicate on any claims arising from infringement of the European patent in the UK as well.

In this decision, the UPC did not come up with any new doctrine, but merely applied the principles of the Brussels I bis Regulation, which is already followed by all EU courts. However, as this is a new multinational patent litigation court, the issue has generated significant interest among lawyers and patent attorneys. 

This again shows that, especially in the early days of the functioning of the UPC, it is necessary to follow all its decisions in which the UPC lays down the principles of how its founding documents work and how its individual rights are applied and interpreted. This will ensure that the legal and patent lawyers are not surprised by the potential impact on their clients in the Czech Republic and Slovakia.

As Czech and Slovak citizens and companies can already apply for a UP in all 18 unified patent Member States, knowledge of UPC’s decision-making practice is crucial, especially if they decide to enforce their rights under the granted unified patent.