The UPC´s long-arm jurisdiction: Uncharted Waters or Business as Usual?

In our last article on the Unified Patent Court (UPC), we highlighted that the Unitary Patent and the UPC are moving closer to their implementation and gave an overview of pressing issues across Europe, including FRAND, and their possible influence on decisions of the UPC.

Since then, the Administrative Committee has adopted further amendments to the Rules of Procedure of the UPC (RoP) and final preparatory steps are underway before the UPC begins operating. On 7 October 2022, a more concrete timeline for the start of the UPC system was published with the sunrise period originally starting on 1 January 2023 and the UPC opening for business on 1 April 2023. Due to issues concerning the new Content Management System necessary to file documents at the UPC this timeline has been pushed back for an additional two months. The new start to the sunrise period is now planned for 1 March 2023 with the UPC commencing operations on 1 June 2023.

These most recent amendments to the RoP include a particularly interesting change: the deletion of “Contracting Member States” in Rules 5 para. 1(b) and para. 7, and its replacement with “states”. Rule 5 of the RoP relates to the specifics of how an opt-out for a European Patent during the transitional period of the UPC must be declared. An explanatory remark in Annex 1 clarifies that the old wording in the opt-out Rule 5 para. 1(b) (and mirrored in Rule 5 para. 7 regarding the withdrawal) was “inconsistent with the indivisibility of the application to opt out. It implie[d] that the UPC solely ha[d] jurisdiction over UPCA Contracting Member States, which [was] not the case”.

The change in wording could imply that an opt-out needs to be declared not only for the Contracting Member States of the UPC Agreement (UPCA), but also for all relevant EPC states. This revised wording could include non-EU countries such as Switzerland, Turkey and the UK, and those EU countries not joining the UPCA: Spain, Poland and Croatia, meaning patentees would need to expressly opt-out with respect to these states.

In view of this last-minute change, this article aims to shed some light on the potential legal basis for the amendment to Rules 5 para. 1(b) and para. 7. We will also highlight the remaining uncertainty and inconsistencies with respect to existing European case law of the European Court of Justice.