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Recent UPC rulings ‘make Irish vote urgent’

Lawyers at Pinsent Masons say that recent rulings by the Unified Patent Court (UPC) should prompt the Irish Government to hold a referendum on participation “as a matter of urgency”.

Participation in the UPC system is open to EU member states only, after they have signed and ratified the UPC agreement.

Ireland has signed the agreement, but a referendum is needed before the deal can be ratified. A vote on Ireland’s participation in the UPC system had been set for June last year, but was later postponed by the Government.

Non-UPC countries

Pinsent Masons lawyers Maureen Daly and Karen Gallagher were commenting after local divisions of the UPC exercised the so-called ‘long-arm jurisdiction’ of the UPC in two recent cases.

The term is used to describe the question of whether UPC decisions have the potential to extend to non-UPC countries – a matter that the lawyers say has attracted significant uncertainty and debate both before and since the UPC became operational.

In the first of the cases, Düsseldorf’s local division ruled that it had jurisdiction to determine whether there had been infringement of the British part of a European patent owned by Fujifilm, even though Britain does not participate in the UPC system.

It came to that view on the basis that other parts of the relevant European patent applied in a country where the UPC system had been legally implemented.

Precedent

In a more recent case, the UPC’s Helsinki division assumed jurisdiction over the Spanish part of the relevant European patent, in respect of infringement, in a dispute between AIM Sport and Supponer – even though Spain does not participate in the UPC system.

Daly and Gallagher said that, if the UPC’s long-arm jurisdiction were confirmed by the UPC Court of Appeal, it would create a precedent that could expose the Irish components of European patents to decisions by UPC judges – even though Ireland itself was not yet a participant in the UPC system.

“Ireland cannot continue to be on the sidelines, looking in while the UPC continues to enforce patents,” said Daly.

“This is depriving Irish SMEs from availing of the UPC system and accessing of all the benefits that it provides,” she stated, adding that Irish SMEs were at “a competitive disadvantage” to those in other EU member states.

The lawyer added that the UPC referendum’s absence from the Programme for Government meant that there was likely to be a delay in ratifying the UPC agreement.

Appeal expected

Gallagher referred to a previous decision by the UPC Court of Appeal that had been met “with relief” in Ireland, as it had indicated that Ireland would not be subject to the court’s jurisdiction ahead of ratification.

“At that point, the matter of the UPC’s long-arm jurisdiction loomed in the background but had yet to be considered in a UPC case,” he stated.

The lawyer said that he expected the Fujifilm decision to be appealed to the UPC Court of Appeal, which could then set out “a uniform approach” to the issue.