Although the United Kingdom will not be participating in Unified Patent Court and unitary patent scheme, it nonetheless remains an important strategic jurisdiction for European and global patent litigation.

The UPC is not a European Union institution, but rather an international court with participating EU member states. However, the UK formally withdrew from the UPC and UP scheme following Brexit on the basis that the UPC will still be bound by the Court of Justice of the European Union on issues of EU law.

The UK remains a party to the European Patent Convention and member of the of the European Patent Office. National patents and EPs designated for the UK will remain available under the current system and continue to be litigated in the Patents Court and Intellectual Property Enterprise Court of England & Wales—the UPC will not have the jurisdiction to make decisions in respect of UK patents.

As such, there is the potential for parallel proceedings to take place in the UK and UPC with respect to counterpart EPs and UPs, and we anticipate the UK will continue to be a key strategic jurisdiction for European and global patent litigation for several reasons including: (1) persuasiveness; (2) procedural advantage; and (3) potential pre-emptive effect.

Persuasiveness

The English Patents Court remains a respected forum for determination of issues of validity and infringement due to inter alia specialist judges and provision of detailed, reasoned judgments.  Assuming English decisions precede those of the UPC, they may have important persuasive effect on the course of UPC proceedings and their outcomes—including those for preliminary injunctions.

Procedural Advantage

There remain procedural advantages to litigating in the UK.  For example, pleadings tend to require less detail, proceedings are relatively quick (with patent cases ideally going to trial within a year) and can be further expedited, and disclosure and cross-examination are generally available as a matter of course. The speed of UPC proceedings is as yet untested, and disclosure and examination of witnesses and experts are anticipated to be far more limited in the UPC.

Potential Pre-Emptive Effect

As most recently articulated by the Court of Appeal, the courts of England and Wales “have jurisdiction in proceedings for infringement of a foreign patent save where those proceedings are principally concerned with a question of the validity of that patent” assuming in personam jurisdiction requirements are satisfied: see GW Pharma Ltd & Anor v Otsuka Pharmaceutical Co. Ltd [2022] EWCA Civ 1462 at [49].

Assuming then that the English court is first seised of such proceedings where it has jurisdiction over foreign patents, there is an argument that the UPC might be obligated to stay or dismiss parallel proceedings (i.e., those involving the same cause of action between the same parties) under Article 33 of the Recast Brussels Regulation.  However, there are a number of jurisdictional hurdles to meet here, and it remains unclear whether the ‘seising’ would be in respect of all EPs/UPs or just those designations implicated by the English judgment.  Moreover, the fact that the UK is not a party to the Recast Brussels Regulation or Lugano Convention means parties must rely on older bilateral treaties and statutes in order to enforce such a decision outside the jurisdiction.

Relatedly, the English courts remain prepared to make global FRAND rate determinations: see Unwired Planet v Huawei Technologies [2020] UKSC 37.  It remains to be seen whether the UPC is prepared to do so, and we therefore anticipate the English Patents Court will remain a hotspot for SEP/FRAND litigation.

Conclusion

The UK’s withdrawal from the UP/UPC system has created new strategic challenges and opportunities that mean it will remain an important patent jurisdiction for the foreseeable future.

Wiggin’s combined teams in London and Brussels, consisting of UK and EU specialists qualified to represent you in the UK and before the UPC, are well positioned to help you navigate this new international patent landscape.