28. UPC Keynotes – UPC Jurisdiction for Ireland

What are the limits of UPC jurisdiction? Does the UPC also have jurisdiction over Ireland?

In an order delivered last June 19, 2024 (UPC_CFI_130/2024), the UPC Local Division of The Hague has clarified this issue, that we will analyse in today's update.

As known, 24 EU Member States have signed the Agreement on a Unified Patent Court (UPCA) and 17 of them have ratified it, which means that the UPCA is in force in those 17 States.

Ireland is one of those 7 EU Member States which have signed but not yet ratified the UPCA and may ratify it at any time.

The issue of determining the jurisdiction of the UPC in States that have not ratified the UPCA yet (e.g. Ireland) emerged in the proceedings ACT_14944/2024 concerning European Patent No. EP2713879 started by the patent proprietor Abbott Diabetes Care Inc. (hereinafter referred to as “Claimant”) against Sibio Technology Limited (“Defendant 1”) and Umedwings Netherlands B.V. (“Defendant 2” or hereinafter both jointly referred to as “Defendants”).

The patent at issue concerns continuous glucose monitoring (“CGM”) devices which are developed, manufactured and marketed by the Claimant since 2007. The patent is valid and in force in Germany, France, The Netherlands and Ireland: all these Countries are Contracting Member States of the UPCA. The patent was originally opted out of the competence of the UPC, but this opt-out was withdrawn by the Claimant on 14 March 2024.

Defendant 1 also manufactures CGM systems and at the end of 2023 entered the European market with its CGM device, called “GS1”. Defendant 2 is an EU importer of the GS1 device.

On March 20, 2024 the Claimant lodged an Application for a preliminary injunction and other provisional measures against the Defendants at the UPC Local Division of The Hague.

The Claimant was then provided with the Protective Letter already filed on September 29, 2023, by Shenzhen Sibionics Co. Ltd stating that it would not infringe the patent at issue by providing the GS1 devices in the Contracting Member States.

After being provided with the Protective Letter, the Claimant decided not to withdraw its application. The Defendants lodged an Objection to the application for provisional measures on 23 April 2024. On 8 May 2024 Claimant lodged a Reply to the Objection to the application for provisional measures. Seven days later, the Defendants lodged a Rejoinder to this Reply.

An oral hearing was held on 22 May 2024 at the UPC Local Division of The Hague and was followed by the order at hand, with which the UPC Local Division of The Hague first ruled on its competence over Ireland.

According to the UPC judges, the Claimant’s application set out the following: “The Patent is valid and in force in the Contracting Member States of Germany, France, The Netherlands and also Ireland. It is also in force in the UK.”. Therefore, the UPC judges stated that by including also Ireland, Claimant’s intention was clearly to obtain an order covering also Ireland. The judges furthermore confirmed that Ireland “is a signatory state to the UPCA, and therefore a Contracting Member State, even though Ireland has not yet ratified the Agreement” (page 6 of the order at hand).

The Judges confirmed that the UPC is competent pursuant to (i) Art. 31 UPCA, which provides that the international competence of the UPC is established in accordance with Brussels Regulation 1215/2012 as amended by EU Regulation 542/2014 (“BrusselsR”) and (ii) Articles 26 (according to which a court of a Member State before which a defendant enters an appearance shall have jurisdiction), 35 (“Application may be made to the courts of a Member State for such provisional, including protective, measures as may be available under the law of that Member State, even if the courts of another Member State have jurisdiction as to the substance of the matter”) and 71, 71a and 71b (“This Regulation shall not affect any conventions to which the Member States are parties and which, in relation to particular matters, govern jurisdiction or the recognition or enforcement of judgments”) of the BrusselsR.

According to the judges, UPC competence is also confirmed due to the fact that Defendants did not challenge the competence of the UPC with respect to Ireland.

For the reasons abovementioned, even if it does not ratified UPCA, Ireland may be subject to UPC jurisdiction.

You can find the relevant order at the following link.