Lawyers at Pinsent Masons say that a recent ruling from the Court of Appeal of the Unified Patent Court (UPC) provides clarity on the jurisdictional scope of the UPC’s powers.

According to the firm, the ruling confirmed that businesses seeking to enforce their patent rights in Ireland cannot rely on orders of the UPC to do so.

In a note on the Pinsent Masons website, patent-litigation experts Maureen Daly and Karen Gallagher say that the ruling will be welcomed by Irish businesses that have not envisaged litigating before the UPC as part of their patent strategies.

The UPC Court of Appeal order sets aside part of a recent ruling made by the local division of the UPC in the Hague.

Preliminary injunction

In its ruling in June, the Hague local division granted an application from Abbott Diabetes Care Inc (Abbott) for a preliminary injunction in respect of a European patent it owns that applies to continuous glucose-monitoring (CGM) devices used in the management of diabetes.

The preliminary injunction that was granted extended not only to the UPC member states where Abbott’s European patent is in force – Germany, France, and the Netherlands – but to Ireland too, where Abbott’s European patent is also in effect. This was despite Ireland not yet fully participating in the UPC system.

SiBio, one of the firms affected by the order, subsequently lodged an appeal, claiming that the extension of the scope of the order to Ireland specifically was “manifestly erroneous”.

The UPC Court of Appeal agreed with SiBio’s argument, citing problems with the wording of Abbott’s preliminary injunction application, which appeared to imply that Ireland was a ‘contracting member state’ for the purposes of the UPC Agreement (UPCA).

Businesses ‘concerned’

Although Ireland has signed the agreement, it has not yet ratified it. A referendum on the issue, due to be held last June, was postponed by the Government.

Gallagher said that the Court of Appeal’s decision had provided “some welcome clarity”, adding that Irish businesses had been “understandably concerned” that they might become subject to UPC jurisdiction without being in a position to enjoy any of the benefits of the UPC system.

Daly stated: “If the original decision had stood, it would have undermined Ireland’s constitutional process, whereby a referendum is needed to formally ratify the UPC Agreement – and indeed would have brought into question why a referendum was needed at all, if the Hague local division deemed the UPC already had competency in Ireland.”