Sioen v TEXPORT
Sioen's preliminary objection against TEXPORT's enforcement of protective-clothing patent EP 2 186 428 has been rejected by the Nordic-Baltic Regional Division (RD) at the Unified Patent Court . The order covers the questions of jurisdiction that are often at issue in the UPC, and touches on points relevant to practitioners.
The original order is linked at the end of this article, and is appealable together with the decision on the merits.
?? What's happened where?
Here's a very abbreviated set of facts:
?? How was jurisdiction determined?
The RD starts from Article 71c(2) of Regulation (EU) No 1215/2012, better known as the Recast Brussels Regulation ('RBR').
Article 71c(2) RBR provides that Articles 29-32 RBR apply during the UPC's 'transitional period'. The transitional period is provided for by Article 83 UPCA. Here are Articles 71c(2) RBR and 83 UPCA together (we'll get to Articles 29-32 RBR below):
Article 71c(2) RBR: Articles 29 to 32 shall apply where, during the transitional period referred to in Article 83 of the UPC Agreement, proceedings are brought in the Unified Patent Court and in a court of a Member State party to the UPC Agreement.
Article 83(1) UPCA: During a transitional period of seven years after the date of entry into force of this Agreement, an action for infringement or for revocation of a European patent or an action for infringement or for declaration of invalidity of a supplementary protection certificate issued for a product protected by a European patent may still be brought before national courts or other competent national authorities.
Articles 29-32 RBR form part of the RBR provisions governing "lis pendens" - literally, "case pending" - which instruct Member States' courts on how to proceed when the same or similar cases are filed in different courts.
?? Article 29 RBR: different parties and res judicata
Article 29 RBR was used as a first port of call for deciding the issue of jurisdiction:
Article 29 RBR: 1. Without prejudice to Article 31(2), where proceedings involving the same cause of action and between the same parties are brought in the courts of different Member States, any court other than the court first seised shall of its own motion stay its proceedings until such time as the jurisdiction of the court first seised is established. [...] 3. Where the jurisdiction of the court first seised is established, any court other than the court first seised shall decline jurisdiction in favour of that court.
Sioen argued that under this Article, the UPC should decline jurisdiction, on the basis that proceedings involving the same cause of action between the same parties were already before the Belgian Court. Recall that the Belgian Court proceedings involve Mr [redacted], while the UPC proceedings involve TEXPORT.
The RD focussed on the identity of the parties, and noted that to meet the requirements of Article 29 RBR, the parties had to be identical, or had to have such a degree of identity between their interests that a judgement against one would have the force of res judicata against the other. Res judicata - literally "a matter judged" - is a legal doctrine that prevents the re-litigation of matters that have already been decided.
The RD held that "it is clear" in this case that the parties weren't the same for the purposes of Article 29 RBR, and a judgement against TEXPORT wouldn't have the force of res judicata against Mr [redacted]:
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Mr [redacted] is not the same legal entity as TEXPORT and their interests are not indissociable. Accordingly, there is not such a degree of identity between their interests that a judgment delivered against one of them would have the force of res judicata as against the other.
?? Article 30 RBR: actions weren't "related"
Even if the cause of action or the parties aren't the same under Article 29 RBR, courts have discretion to stay proceedings if the cases are nevertheless "related", under Article 30 RBR:
Article 30 RBR: 1. Where related actions are pending in the courts of different Member States, any court other than the court first seised may stay its proceedings. [...] 3. For the purposes of this Article, actions are deemed to be related where they are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings.
The RD didn't consider the UPC and Belgian cases "related" in the sense of Article 30 RBR. The RD factored in the specific jurisdictions that were relevant in the UPC case, as well as the speed of UPC proceedings:
In this case, the Belgian court has – in a decision that is not yet final – declared that it has jurisdiction with respect to the claims filed concerning the Belgian part of the Patent, but that it does not have jurisdiction in respect of the claims filed concerning the other member states where the European patent is in force. In the case before the UPC, TEXPORT refers to alleged infringements in Latvia and Portugal. Accordingly, SIOEN has not shown that it is possible to apply Article 30.2. Furthermore, the oral hearing at the UPC has been scheduled for February 2025, while the oral hearing at the Belgian Court is scheduled for June 2025 [...] The fact that a final decision by the UPC may include remedies also covering Belgium does not lead to a different conclusion.
?? Considerations for exclusive licensees - TBD
Separate to the issue of jurisdiction, was a question of whether TEXPORT's specific circumstances as an exclusive licensee permitted it to bring an action at the UPC. Here's Sioen's objection as reported in the order:
TEXPORT’s exclusive license is not registered with any patent office and, therefore, not opposable against third parties, such as SIOEN. Furthermore, TEXPORT has not shown that Mr [redacted] was given prior notice, as required by Article 47.2 UPCA. For these reasons, TEXPORT has not the necessary standing and its claim is inadmissible.
And here's Article 47(2) UPCA:
Unless the licensing agreement provides otherwise, the holder of an exclusive licence in respect of a patent shall be entitled to bring actions before the Court under the same circumstances as the patent proprietor, provided that the patent proprietor is given prior notice.
This question isn't decided in the order, though. Both the parties and the RD agreed to handle this issue in the main proceedings. One to keep an eye on for exclusive licensees.
?? Case details and footnotes
#UPC #unifiedpatentcourt #upcnugget #patentlitigation
Any views expressed apply solely to the parts of the document(s), order(s) and/or decision(s) under discussion. Such views are those of the author(s) at the time of writing, and do not necessarily represent their current views or the views of their employer. This article provides a summary of the subject-matter and should not be acted on without first seeking legal advice.
Senior Associate at Carpmaels & Ransford LLP | European & UK patent attorney, UPC representative
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