Recent rulings by the Unified Patent Court (UPC) should prompt the Irish government to establish a referendum on the country’s participation in the UPC system as a matter of urgency, experts have said.
Maureen Daly and Karen Gallagher of Pinsent Masons were commenting after local divisions of the UPC exercised the so-called ‘long-arm jurisdiction’ of the UPC in two recent cases. The term is used to describe the question of whether UPC decisions have the potential to extend to non-UPC countries – a matter that has attracted significant uncertainty and debate both before and since the UPC became operational.
In the first of the cases, that it had jurisdiction to determine whether there had been infringement of the UK part of a European patent owned by Fujifilm, even though the UK, like Ireland at this point in time, does not participate in the UPC system. It came to that view on the basis that other parts of the relevant European patent applied in a country where the UPC system has been legally implemented. UPC rulings extend infringement UK part European patents
In a more recent case, the Helsinki LD of the UPC assumed jurisdiction over the Spanish part of the relevant European patent, in respect of infringement, in a dispute between AIM Sport and Supponer – even though Spain does not participate in the UPC system.
Participation in the UPC system is open to EU member states only. However, each EU country must sign and ratify the UPC Agreement before they can participate in the system. Ireland has signed the UPC Agreement but has not yet ratified it. Before Ireland can ratify the UPC Agreement, a referendum on participation in the UPC system needs to be held in the country. This is because the Irish constitution requires such a referendum where there is a planned ceding of judicial powers to an international court – as would be the case with the UPC. That referendum has not yet taken place.
Daly and Gallagher said that if the UPC’s long-arm jurisdiction is confirmed by the UPC Court of Appeal, it would create a precedent that could expose the Irish components of European patents to decisions by UPC judges – even though Ireland itself is not yet a participant in the UPC system.
“The decisions further reinforce how imperative it is that Ireland ratify the UPC Agreement as soon as possible,” Daly said. “Ireland cannot continue to be on the sidelines, looking in while the UPC continues to enforce patents. This is depriving Irish SMEs from availing of the UPC system and accessing of all the benefits that it provides. Irish SMEs are at a competitive disadvantage as they are not on a level playing field with their counterparts in member states where the UPC Agreement has been ratified.”
“The fact that the UPC referendum was not listed in the recent ‘programme for government’ means that there is likely to be a delay in ratifying the UPC Agreement and such a delay will ultimately affect Ireland’s reputation as a hub for innovation and technology,” she said.
Gallagher added: “In the SiBio case, the UPC Court of Appeal refused to extend the injunction sought to Ireland on the basis that the application for the injunction had sought to cover UPC ‘contracting states’ – the Court of Appeal found that as Ireland had not yet ratified the UPC Agreement, it was not a contracting state. That decision was met with relief by patentees in Ireland, who read it as an indication that at least while Ireland was yet to ratify the UPC, it would not be subject to its jurisdiction. At that point, the matter of the UPC’s long-arm jurisdiction loomed in the background but had yet to be considered in a UPC case.”
“The Fujifilm decision, although it is only a local division decision, would suggest that the UPC’s long-arm jurisdiction does in fact extend to Ireland. After all, if it extends to third countries such as the UK that have formally withdrawn from the UPC Agreement, the sensible conclusion is that it will also apply to Ireland, which is in a state of limbo, having signed the UPC Agreement but not yet ratified it. We expect that the Fujifilm decision will be appealed to the UPC Court of Appeal, which will then have an opportunity to set out a uniform approach to this issue,” she said.
“The new Irish government set out a list of priorities in its programme for government. Among those were commitments to the patent-rich life sciences and tech sectors, and a nod to the protection of intellectual property rights. UPC ratification was not mentioned, but as UPC case law on long-arm jurisdiction develops, business groups will continue to lobby the government to put the referendum back on the agenda and give Ireland a voice at the UPC. It is only through ratification and full participation in the UPC that Ireland and Irish businesses can have a role in shaping the future of the court,” Gallagher said.
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