IP Report
Patent Law

UPCA not applicable in national infringement proceedings
Higher Regional Court of Karlsruhe, judgment dated February 14, 2024,
docket no.: 6 U 232/22
Reported by Dr. Tobias Wuttke and Paul Lepschy
Bringing the UPCA into force does not(yet) render obsolete national patent
infringement proceedings based on
European patents without unitaryeffect. In its judgment dated February 14, 2024 (docket no. 6 U 232/22),
the Higher Regional Court ofKarlsruhe — apart from making someinteresting comments on the questionof the extent to which an opposition
decision is equivalent to the description of the patent — clarifies that such
legal disputes will continue to be foughton secure terrain: the UPCA and its
substantive law are not applicable innational infringement proceedings.
1. Introduction
Since the UPCA entered into force, the UPC
has had the sole jurisdiction in particularfor infringement complaints arising fromand revocation actions against Europeanpatents with and without unitary effect(Art. 32 (1) lits. a) and d) in conjunction with
Art. 2 lit. g) UPCA; international jurisdiction pursuant to Art. 31 UPCA, in particularin conjunction with Art. 71a et seqq. of theBrussels Ia Regulation assumed).
For European patents without unitaryeffect, however, the transitional provision ofArt. 83 (1) UPCA applies, according to which
revocation and infringement complaints canstill be filed before national courts duringa transitional period of seven years after
the UPCA enters into force or, additionally,according to paragraph 3, the exclusive

jurisdiction of the UPC can even be excluded(“opt-out”). Looking subsequently at Art. 3lit. c) UPCA, the following is stated: “ThisAgreement shall apply to any Europeanpatent [...] without prejudice to Article 83[...]”.

Dr. Tobias Wuttke
Attorney-at-Law(Rechtsanwalt), Certified IPlawyer, UPC Representative,
Partner

Does this mean that a national court has (concurrent) jurisdiction under Art. 83 (1) UPCA,
but must apply the UPCA and in particular
the substantive law provided for therein?
2. The decision by the Higher Regional
Court of Karlsruhe
The Higher Regional Court of Karlsruhe clearlyrejects this interpretation in its judgment dated
February 14, 2024. Following the consent inaccordance with Art. 59 (2) German Constitution (Grundgesetz), the UPCA formally has thesame status as national patent law; however,the powers of “the court” in accordancewith Art. 56 et seqq. UPCA can, according
to Art. 2 lit. a) UPCA (court = UPC), only bethose of the UPC. Its own substantive law
from Art. 25 et seqq. UPCA — i.e., the rightto prohibit the direct and indirect use of aninvention — can therefore, from a systematic
point of view, only be applied by the UPC. Thisis also explicitly expressed in Art. 24 (1) lit. b)
UPCA which specifically addresses the UPC(“the court”) — and only the court — as theimplementer of the UPCA.

Paul Lepschy
Research assistant

BARDEHLE PAGENBERG
Partnerschaft mbB
Patentanwälte Rechtsanwälte
Prinzregentenplatz 781675 München
T +49.(0)89.928 05-0
F +49.(0)89.928 05-444

The Higher Regional Court of Karlsruhe
obiter states that the application of Art. 25 etseqq. UPCA would not have led to a different
outcome of the dispute.

info@bardehle.dewww.bardehle.com
ISO 9001 certified

IP Report
Patent Law

3. Comments

The decision of the Higher Regional Courtof Karlsruhe does not only convince for thereasons expressed in it, but also in two otherrespects:
On the one hand, the following internal
systematic consideration applies:
Art. 3 lit. c) UPCA specifically determines theapplication of the UPCA “without prejudice to Article 83”. If this exception to theexception is supposed to express that only
the jurisdiction arises from Art. 83 UPCA
by way of derogation, it would logically haveto be located in the jurisdiction provisionsof Art. 31 f. UPCA. In the chosen regulatory
context, it can therefore only be understoodto mean that the UPCA does not apply in any
other respect in cases of Art. 83 UPCA.

The “Valentine’s Day” decision of the Higher
Regional Court of Karlsruhe is therefore
a gift for lovers of national infringement
proceedings, but also illustrates that those
who prefer the UPCA must actually go tothe UPC. Although the application of Art. 25
et seqq. UPCA would not have resulted ina different ruling in the case to be decided,
the situation may be different in many cases(e.g. with regard to the scope of a right ofprior use that may only exist nationally; seeArt. 28 UPCA). In this respect, the choiceof jurisdiction thus remains one of the mostimportant strategic decisions in patent
infringement actions.

On the other hand, the meaning and purposeof Art. 83 UPCA in the overall system only
allows for this understanding. After all, theopt-out under Art. 83 (3) UPCA in particular
is intended to provide an opportunity to opt
out of the new system. The possibility thatthe national court seized would then nevertheless apply the new provisions of the UPCA
would not be compatible with this.

2