Fordham 32 (Post 2): Judicial Landscape, the UPC and BSH v Electrolux

Another glorious day that IP lawyers 
in midtown only got a glimpse of...

Although missing the wonderful spring weather in Manhattan, the IP glitterati were enjoying an afternoon of more IP debate on the first day of the Fordham IP Conference.  The final panel of Day 1 of the Fordham promised insights into the European judicial landscape.  

Over to Kat friend, Emily Bottle (HSF) who, at her first Fordham, reports on the session for IPKat readers:

"Wolrad Prinz zu Waldeck und Pyrmont (Freshfields, Düsseldorf) moderated a panel with speakers Judge Klaus Grabinski (President of the UPC Court of Appeal), Peter Thomsen (President of the European Patent Institute, Switzerland) and Judge Edger Brinkman (judge in both the Hague Local Division of the UPC and the national Court of the Hague), as well as panellists Simon Holzer (MLL Legal, Switzerland) and Lionel Martin (August Debouzy, Paris).

Judge Grabinski kicked off with his insights into the Unified Patent Court (UPC), which has now been operating for nearly 2 years and has been busy – publishing almost 800 decisions and orders. His focus was on jurisdiction which, he said, has become "a bit more interesting" following the recent CJEU decision in BSH v Electrolux (C-399-22). He noted that it is now clear the UPC not only has jurisdiction for infringement that has occurred or is imminent in a UPC state, but also where infringement has occurred or is imminent in a non-UPC state – provided that the Defendant has its seat in a UPC state.

But how should validity be dealt with when that comes up? If the non-UPC state is part of the EU (e.g. Spain, Poland), then it is clear the UPC has no jurisdiction over a standalone revocation action, so the defendant is strongly advised to bring a revocation action in the non-UPC state. The UPC will then consider the likelihood of success of that revocation action and may or may not stay the UPC proceedings. On the other hand, if the non-UPC state is not part of the EU (e.g. the UK, Switzerland, Turkey), then the UPC has competence to rule inter partes on the defence that the patent is invalid, although there will be no erga omnes effect as to the existence or content of the patent. He also noted that the UPC has jurisdiction on the infringement of a European patent if one defendant of a multitude of defendants (e.g. a group of companies) has its seat in a UPC state and the claims are so closely connected that it is expedient to hear and determine them together in order to avoid irreconcilable judgments (referring to Roche v Primus (C539/03) and Solvay v Honeywell (C-616/10). Therefore, an open question remains as to whether this also applies to the regime that the CJEU outlined in BSH, which referred to just one defendant with its seat in a UPC state. He said it remains to be seen how the UPC will deal with this, and whether they will make a referral or not.

Simon Holzer commented that position set out in BSH is favourable for patentees, permitting one forum to decide infringement and damages even for non-UPC states, though it may lead to more bifurcated cases as the only defence in some cases (those involving non-UPC states that are part of the EU) will be to start a national revocation action elsewhere. This may lead to challenges in cases where claim construction must be balanced between infringement and validity considerations. He noted that, as to the open question on a multitude of defendants, the UPC's Paris Local Division had recently considered this and affirmed jurisdiction over a defendant without a seat in a UPC state, in a decision of 21 March 2025 (Mul-T-Lock France, Mul-T-Lock Switzerland v. IMC Creations UPC_CFI_702/2024). He also noted that, although beyond the scope of the session, another interesting aspect arising out the BSH decision is that national EU courts (but not the UPC) have jurisdiction over infringement for non-EPC states (e.g. the US), with validity issues able to be determined inter partes.

In the following discussion, it was noted that one consequence of BSH may be to put defendants, sued for infringement in relation to non-UPC EU states, under significant pressure – potentially needing to bring several revocation actions – even though the UPC may already be dealing with a counterclaim for revocation brought in relation to the parts of the patent bundle covering UPC states.

Discussions then turned to whether, in the light of BSH, national litigation is still needed. Lionel Martin observed that there has, since the advent of the UPC, been a drop-off in national cases in France, Germany and likely too in the Netherlands. However, national litigation is still of course needed for national patents, and in his view it may be that filings of those patents take off as a way for patentees to keep that option open. Finally, an added appeal of national courts post-BSH is their jurisdiction over infringement for non-EPC states (unlike the UPC).

Peter Thomsen gave his views on the performance of the UPC, providing a "scorecard" on whether the system is fulfilling its promises. In his view, the goal of providing a single procedure with the best elements from national systems, applying one set of harmonised substantive law across a large swathe of European territory, has largely been met. He welcomed the timelines that can be achieved in the UPC system, with main proceedings decided in 12-14 months, inter partes PIs in 3-4 months and ex parte PIs in 1-2 days. In his view the quality of the decisions is also admirable – being largely predictable and well-reasoned, with some room remaining for the Court of Appeal to harmonise diverging views in some areas (such as on the question of urgency for PI proceedings). He was also complimentary about the balance struck between transparency and protection of parties' commercially sensitive information. An area for improvement he identified was the ease of use of the case management IT system, with a new system to be implemented mid-2025.

Judge Brinkman reflected on his journey as a judge in the UPC system for 2 years, in comparison to his role as a national judge. The "saddest thing", he suggested, was the absence of his English judicial colleagues from the UPC system. He spoke of certain challenges in the UPC, including the mixing of judges with different backgrounds. As an example, he highlighted that in Germany judges are "career judges", brought up in a bifurcated system, whereas in the Netherlands approximately half of the judges started their careers in private practice. Another challenge he highlighted was performing judging duties in a second language. A discussion ensued on how technically qualified judges and legal judges cooperate on UPC cases – with Judge Grabinski noting that although there may be a shift in tasks from the legal judges to the technically qualified judges (such as writing a report on validity or infringement aspects), at the end of the day all have same vote on technical aspects as well as on legal aspects. Brinkman's wide-ranging remarks also touched on FRAND and on confidentiality clubs (contrasting the position in the Netherlands, where documents can be kept to attorneys' eyes only, and the UPC, where there must be a natural person from the party that has access).

There was also mention of the UPC's Patent Mediation and Arbitration Centre – with Judge Grabinksi commenting that it will be a forum in which to set FRAND rates in SEP proceedings, both those pending in the UPC and other courts."