English patent torpedoes and the UPC

Quick read

The UK is not participating in the UPC, but the two systems will be inextricably linked when considering a European patent litigation strategy. One tool in the armoury of litigants when using these jurisdictions will be the English cross-border non-infringement declaration, which has the potential to affect UPC infringement proceedings concerning both European and Unitary Patents.

UK-UPC strategy

There are various ways in which both patent holders and third parties will use the UK jurisdiction, particularly the English Patents Court, for strategic advantage when UPC proceedings are envisaged.

We’ve previously explained that – as long as neither the Brussels Regulation (recast) or the Lugano Convention bind the UK – the principles applicable in Actavis v Eli Lilly may permit cross-border declarations of non-infringement to apply to EU domiciled defendants as well as non-EU domiciled defendants, where European patents in the UK and other jurisdictions are concerned.

Now that the UPC and Unitary Patent system has overcome the latest constitutional complaint in the German Federal Constitutional Court and is tipped to open in early 2023, we can consider the potential impact of this "English torpedo" on UPC proceedings. How could claims of infringement or non-infringement of European patents and Unitary Patents be affected if a declaration of non-infringement were obtained in the English Patents Court?

Stay or dismissal of a UPC action

Proceedings for an English torpedo in the English Patents Court, when applied to European patents in one or more of the 22 EU countries participating in the UPC, raise the possibility of duplicative actions with the UPC. These patents may be in a bundle that will later be litigated in the UPC, or a Unitary Patent – provided all the relevant proprietors and licensees likely to take part in the UPC infringement/non-infringement action are parties to the English action.

The possibility of conflicting proceedings between an EU court (the UPC is bound by EU law here, as made clear in the UPC Agreement) and a court of a third State (the UK) are foreseen in the international lis pendens provisions in Article 33 Brussels Regulation (recast).

Under Article 33.2, if the UPC is seised by an action concerning the same parties and the same cause of action as a court of the UK it has the discretion to stay its proceedings. If the action in the third state has resulted in a decision that is capable of recognition, the UPC must dismiss (Article 33.3).

A declaration of non-infringement of a patent is the same cause of action as a claim for infringement of that patent. So, a cross-border declaration of non-infringement from the Patents Court concerning one or more European patents or a Unitary Patent has the potential to trigger Article 33 related to an infringement action in the UPC.

This raises the question of whether the UPC would be barred by the application of the international lis pendens provisions from:

proceeding with the infringement action with which it is seised regarding all designations in the European patent bundle or Unitary Patent, or
proceeding with an infringement action concerning a bundle of European patent relating to only the national designations at issue in the English torpedo proceedings, but continuing with the others.

The second interpretation appears inconsistent with the rule that all European patents should be dealt with by the UPC together and at the same time. However, it has the advantage of avoiding the risk of irreconcilable judgments while allowing the action concerning patents unaffected by the torpedo to progress.

There is currently no definitive answer to this question where European patents or Unitary Patents are concerned. In either case, however, the effect of an English torpedo is evident and should be considered when formulating a European patent litigation strategy.