The Unified Patent Court and the Brussels 1 Regulation (recast): How has the Regulation been modified?

How was the Brussels I Regulation modified in order to accommodate the Unitary Patent and the Unified Patent Court? 

Article 89 of the UPC Agreement makes the entry into force of the Agreement dependent upon, among other conditions, the entry into force of the amendments to Regulation (EU) N° 1215/2012 or Brussels I Regulation (recast). The Brussels I Regulation (recast) was adopted on 12 December 2012 to replace Regulation (EC) N°44/2001, and its provisions apply since 10 January 2015 (Article 81 Regulation N°1215/2012). The need to amend the Brussels I Regulations arose because:

  • Under Article 71 of Regulation No 44/2001, Member States were prevented from concluding any new convention that, in relation to particular matters, govern jurisdiction or the recognition or enforcement of judgments
  • The UPC Agreement does not lay down its own rules on international jurisdiction –since the rules on international jurisdiction, recognition and enforcement of judgments concerning the disputes falling within the competence of the UPC had previously been unified within the EU through the Brussels I Regulation;
  • Article 31 of the UPC Agreement states that the international jurisdiction of the UPC shall be established in accordance with Regulation N°1215/2012.

The Brussels I Regulation (recast) sets out a harmonised recognition and enforcement of foreign judgment rules in civil and commercial matters within the European Union. Regulation N° 1215/2012 is a recast version of the prior Brussels I Regulation, which had been in force since 1 March 2002. The recast Regulation applies to legal proceedings commenced in the courts of EU Member States on or after 10 January 2015; the Brussels I Regulation however continues to apply to legal proceedings commenced before that date. Both Regulations apply to all EU Member States and in order to ensure a consistent application of the Regulation throughout the European Union, any national court or tribunal is able to refer a question of interpretation of the Regulation to the Court of Justice of the European Union (CJEU).

The basic rule of jurisdiction established by the Regulation is that the defendant must be sued in the courts of the Member State in which she is domiciled. A defendant who is domiciled in one Member State may only be sued in the courts of another Member State to the extent authorised by the Regulation. The introduction of the unitary patent however led to some modifications of that rule, now contained in the Brussels I Regulation (Recast). The Unified Patent Court will in fact have jurisdiction over claims regarding the unitary patent where a defendant is domiciled in a Member State (art 71b(1) and art 71a). Where the defendant is not so domiciled then it will also have jurisdiction where a person consents to the UPC’s jurisdiction (art 71b(2))or where the patent is infringed causing damage within the EU and the defendant has property located in a country which is party to the Agreement on a Unified Patent Court and the dispute has a significant connection with any Member State to the UPC (art 71b(3)).

All necessary changes relating to the UPC  Agreement are combined in four new provisions all contained in Article 71, which states:

“1. 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.

2. With a view to its uniform interpretation, paragraph 1 shall be applied in the following manner:

(a)  this Regulation shall not prevent a court of a Member State which is party to a convention on a particular matter from assuming jurisdiction in accordance with that convention, even where the defendant is domiciled in another Member State which is not party to that convention. The court hearing the action shall, in any event, apply Article 28 of this Regulation;

(b)  judgments given in a Member State by a court in the exercise of jurisdiction provided for in a convention on a particular matter shall be recognised and enforced in the other Member States in accordance with this Regulation.

Where a convention on a particular matter to which both the Member State of origin and the Member State addressed are parties lays down conditions for the recognition or enforcement of judgments, those conditions shall apply. In any event, the provisions of this Regulation on recognition and enforcement of judgments may be applied.”

In order to ensure the coherent application of the UPC Agreement and the Brussels I Regulation (recast) , it was in fact necessary to address the following issues in the Brussels I Regulation (recast):

Clarify in the text of the Regulation that the Unified Patent Court and the Benelux Court of Justice are ‘courts’ within the meaning of the Brussels I Regulation:

By clarifying that both the Unified Patent Court and the Benelux Court of Justice should be considered as “courts” within the meaning of the Brussels I Regulation (recast), it ensures that the international jurisdiction of these courts will be determined by the Brussels I Regulation. It in particular ensures that defendants which would expect to be sued in a specific Member State on the basis of the rules of the Brussels I Regulation may be sued before either a division of the Unified Patent Court or before the Benelux Court of Justice which is located in another Member State than the national courts designated on the basis of the Brussels I Regulation. Legal certainty and predictability for defendants requires that this change of territorial jurisdiction is set out clearly in the text of the Brussels I Regulation.

Clarify the operation of the rules on jurisdiction with respect to the Unified Patent Court and the Benelux Court of Justice insofar as defendants domiciled in Member States are concerned. Create uniform rules for the international jurisdiction vis-à-vis third State defendants in proceedings against such defendants brought in the Unified Patent Court and Benelux Court of Justice in situations where the Brussels I Regulation does not itself provide for such rules but refers to national law;

The new rule in Article 71b, paragraph 1 prescribes that the Unified Patent Court and the Benelux Court of Justice will have jurisdiction any time when a national court of one of the respective Contracting Member States would have jurisdiction based on the rules of the Brussels I Regulation. On the contrary, the Unified Patent Court and the Benelux Court of Justice will not have jurisdiction when no national court of a Contracting Member State has jurisdiction pursuant to the Brussels I Regulation.

Define the application of the rules on lis pendens and related actions in relation to the Unified Patent Court and the Benelux Court of Justice on the one hand and the national courts of Member States which are not Contracting Party to the respective international agreements on the other hand. Define also the operation of these rules during the transitional period referred to in Article 83(1) UPC Agreement:

The new proposal in Art. 71b, paragraph 2 extends the Regulation’s jurisdiction rules to disputes involving third State defendants domiciled in third States. In addition, the Unified Patent Court’s and Benelux Court of Justice’s jurisdiction to issue provisional, including protective measures is ensured even when the courts of third States have jurisdiction as to the substance of the matter.

As a result of this extension, access to the Unified Patent Court and the Benelux Court of Justice will be ensured in situations where the defendant is not domiciled in an EU Member State. In addition, such access is ensured independently of which instance or division within the Unified Patent Court is seized of a claim.

In addition, the new proposal in Art. 71b, paragraph 3 establishes one additional forum for disputes involving defendants domiciled outside the EU. The proposal provides that a non-EU defendant can be sued at the place where moveable assets belonging to them are located, provided their value is not insignificant compared to the value of the claim and that the dispute has a sufficient connection with the Member State of the court seized. The forum of the location of assets balances the absence of the defendant in the Union.

Clarify the operation of the rules on recognition and enforcement in the relations between Member States which are and Member States which are not Contracting Parties to the respective international agreements:  

The new rule in Art 71c prescribes that the rules on lis pendens and related actions of the Brussels I Regulation (recast) apply between the Unified Patent Court or the Benelux Court of Justice on the one hand and the courts of non-Contracting Member States on the other hand. Finally, this Article also prescribes that the rules of the Brussels I Regulation (recast) apply when, during the transitional period referred to in Article 83(1) UPC Agreement, proceedings are brought before the Unified Patent Court on the one hand and before the national courts of Contracting Member States to that Agreement on the other hand.

Clarify the operation of the rules on recognition and enforcement in the relations between Member States which are and Member States which are not Contracting Parties to the respective international agreements:

Art. 71d regulates the recognition and enforcement of judgments of the Unified Patent Court and the Benelux Court of Justice in Member States which are not Contracting Parties to the respective international agreements, as well as the recognition and enforcement of judgments given in Member States which are not Contracting Parties to these agreements in matters governed by such agreements which need to be recognised and enforced in Member States Contracting Parties to the international agreements.

Brussels I Regulation updates…

So what happened to the Brussels I Regulation since the European Parliament and the Council of Ministers approved its amendments (see our post here)? 

In May 2014, the regulation ( Regulation No 1215/2012) on the rules to be applied with respect to the Unified Patent Court and the Benelux Court of Justice was published in the Official Journal, amending the EU rules on the jurisdiction of courts and recognition of judgments (or Brussels I Regulation).  However although it entered into force, it will only apply from 10 January 2015.

In August 2014, Denmark after ratifying the UPCA notified the European Commission of its decision to implement the amendments made to the Brussels I Regulation (see paragraph above). Denmark in fact opted-out of the Brussels I Regulation and must therefore notify the Commission of its decision to implement -or not- the content of any amendment made to this Regulation. However, after ratifying the UPC Agreement, following a referendum  on 25 May 2014, it was necessary for Denmark to implement the UPC amendments to the Brussels I Regulation. – See more here

 

Brussels I Regulation: EU Parliament paves the way for the UPC

Last week, the European Parliament voted to complete the legal framework for the Unified Patent Court and the Unitary Patent (IP/13/750) (523 votes for, 98 against and 7 abstentions), updating EU rules on the jurisdiction of courts and recognition of judgments. In July 2013 the European Commission had in fact proposed an amendment to the Brussels I Regulation to clarify how its jurisdictional rules will work in the context of the Unified Patent Court, as well as how the rules of the Regulation should be applied in relations between the Member States, Parties to the Unified Patent Court Agreement and the Member States not party to the Agreement.

 

It is now for the Council of Ministers to formally adopt this text in order to become law. This is expected to happen at the Council meeting in June.

Member States endorse Commission proposal to fill legal gaps for unitary patent protection

Ministers in the Council of the European Union have at the beginning of March (on March 4th) endorsed the compromise agreement on the European Commission’s proposal to complete the legal framework for Europe-wide patent protection, updating existing EU rules on the jurisdiction of courts and recognition of judgments (IP/13/750). It is the last missing part for the establishment of a Europe-wide patent protection. It is part of a package of measures recently agreed to ensure unitary patent protection in the Single Market (IP/11/470).

“By making changes to the rules on recognition of judgements, we are taking a further step on the way to the new Unified Patent Court beginning its work,” said Vice-President Viviane Reding, EU Justice Commissioner and Internal market and Services Commissioner Michel Barnier on March 4th  “Today’s endorsement by Ministers confirms the commitment by Member States to set up the Unified Patent Court as quickly as possible and make unitary patent protection in the EU a reality. It is of crucial importance for Europe’s competitiveness and growth that our businesses and innovators benefit from patent protection at a lower cost.”

After Ministers reached a general approach at the December Justice Council (MEMO/13/1109), the European Parliament now needs to vote on its report in plenary, which is expected at the latest in April 2014. The Commission is also encouraging Member States to ratify the Unitary Patent Court Agreement as quickly as possible, and to complete the preparatory work required for the Court to become operational accordingly, so that the first unitary patents can be granted in the shortest possible timeframe.

 

The Agreement relies upon the “Brussels I Regulation” (Regulation 1215/2012) to determine international jurisdiction of the Unified Patent Court. The Commission has therefore proposed On July 26th 2013 an amendment to the Brussels I Regulation to clarify how its jurisdictional rules will work in the context of the Unified Patent Court, as well as how the rules of the Regulation should be applied in relations between the Member States, Parties to the Unified Patent Court Agreement and the Member States not party to the Agreement. This amendment has not however yet been passed by the European Commission.

Amendment of Brussels I Regulation: The Council of Justice Ministers agrees on a General Approach.

On 20 November 2012 the European Parliament voted in favour of the Legal Affairs’ Committee amendments to the European Commission’s proposal to reform the Brussels Regulation. The draft legislation was sent to the Council of the EU for final adoption, which took place on December 06th 2013 at the Council of Justice Ministers.

 

The Council agreed on a general approach on a proposal for a regulation amending Regulation 1215/2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, also known as Brussels I.

This general approach will constitute the basis for negotiations with the European Parliament in order to agree the final text of the regulation.

 

What needs to be amended?

Article 31 of the UPC Agreement states that the international jurisdiction of the Unified Patent Court is to be established in accordance with Regulation 1215/2012, or, where applicable, the 2007 Lugano Convention. Article 89 of the UPC Agreement links the entry into force of that Agreement to the entry into force of the amendments to Regulation 1215/2012 concerning the relationship between those two instruments.

It is therefore necessary to amend Regulation 1215/2012, in particular to insert provisions which determine how the Unified Patent Court can exercise its international jurisdiction.

The Commission submitted its proposal in July 2013. Although the main objective of the proposal is to regulate the relationship between Regulation 1215/2012 and the UPC Agreement, it also takes into account the existence of the Benelux Court of Justice and the international jurisdiction to be exercised by that Court in specific matters which are covered by Regulation 1215/2012.

Source: Press release of the Justice and Home Affairs Council meeting

UPC and Brussels I Regulation

The Permanent Representatives Committee (COREPER II) on November 27 in Brussels endorsed a compromise text of the proposed amendments to the Brussels I Regulation.

These amendments will ensure coherence between the Unified Patent Court agreement and the Brussels I Regulation, and will pave the way for entry into force of the so-called Patent Package (Regulation 1257/2012 and Regulation 1260/2012). In fact, in order for the UPC to come into effect, it is necessary to make an amendment to the recently recast Brussels I Regulation, which deals with the rules of jurisdiction and the recognition and enforcement of civil and commercial judgments, including intellectual property and patent litigation. The proposed amendment provides for the UPC to be recognised as a “Court” for the purposes of the Brussels I Regulation. In particular, it establishes its jurisdictional rules in respect of defendants domiciled in non-EU countries. The basis on which the amendment is made is under Article 81 of the Treaty of the Functioning of the European Union (TFEU). The intention is that the UPC will come into being shortly after the recast Brussels I Regulation in January 2015.

Source: Lithuanian Presidency website