Study on the Unitary Patent Protection in the EUfrom a Viewpoint of Private International Law (*)
Overseas Researcher: Atsuko YAMAGUCHI (**)
In order to establish unitary patent protection in Europe, preparations are presently in progress to establish a
European patent with unitary effect (UP) and a Unified Patent Court (UPC) based on the so-called “patent package,”which was adopted in December 2012. These are available to Japanese companies and individuals and their use isrelated to private international laws in Europe as well as in Japan. However, the contents of private international law
which the UPC shall apply are not adequately known in Japan, and also it is unclear how claims relating to UPs and
UPC judgments should be dealt with under Japanese private international law. For this reason, this research examinessome rules in the field of private international law under the forthcoming unitary patent protection: specifically, rules forinternational jurisdiction and competence of the UPC; laws applicable before the UPC; and Japanese privateinternational law issues from a viewpoint of the UPs and the UPC, such as Japanese international jurisdiction overclaims relating to the UPs, laws applicable to the claims, and recognition and enforcement of the UPC judgements inJapan.

I

Introduction

The European Union (EU) adopted the so-called“patent package” in December 2012. The patent package
consists of two EU Regulations to implement enhanced
cooperation in the area of the creation of unitary patent
protection and one international agreement: specifically
Regulation (EU) No 1257/2012 of the European
Parliament and of the Council of 17 December 2012
implementing enhanced cooperation in the area of thecreation of unitary patent protection1 (UP Regulation);
Council Regulation (EU) No 1260/2012 of 17 December
2012 implementing enhanced cooperation in the area ofthe creation of unitary patent protection with regard to theapplicable translation arrangements 2 (Translation
Regulation)”; and Agreement on a Unified Patent Court3(UPC Agreement). Based on these legal instruments,
preparations are presently in progress to establish a“European patent with unitary effect” (UP) and a“Unified Patent Court (UPC)”.
A UP means a European patent (EP) which benefits
from unitary effect in participating Member States byvirtue of the UP Regulation4. The UPC for the settlementof disputes relating to the EPs and the UPs is establishedby the UPC Agreement, and the Court shall be a court
common to Contracting Member States5 (CMS)6.
The UPs and the UPC are available to Japanesecompanies and individuals. Their use is always related to
private international law in Europe as well as in Japan.
However, the contents of private international laws which

the UPC shall apply are not adequately known in Japan,
and also it is unclear how claims relating to the UPs and
UPC judgments should be dealt with under Japanese
private international law. For this reason, this research
examines some rules in the field of private internationallaw under unitary patent protection: specifically,
international jurisdiction and competence of the UPC aswell as national courts of CMSs during a transitional
period (Chapter II); laws applicable before the UPC,
particularly choice of law rules for UP issues (Chapter
III); and Japanese private international law issues from aviewpoint of the UPs and the UPC, such as international
jurisdiction over claims relating to the UPs which arebrought in Japanese courts, choice of law rules for theclaims, and recognition and enforcement of the UPC
judgments in Japan (Chapter IV).

II International
Jurisdiction
andCompetence of the Unified Patent
Court (UPC) and Courts ofContracting Member States (CMSs)
during a Transitional Period
This chapter deals with international jurisdiction andcompetence of the UPC and courts of CMSs.
1

Allocation of Competence between the UPC
and Courts of CMSs
The UPC shall have international jurisdiction where,
under “Regulation (EU) No 1215/2012 of the European(*) This is a summary of the report published under the 2014FY Industrial Property Research Promotion Project (2014FY-2016FY) Entrusted
by the Japan Patent Office.
(**) Over a period of approximately 11 months from April 14, 2015 through March 11, 2016, as Overseas Researcher under the Program for
the Fiscal Year 2015.
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IIP Bulletin 2016 Vol.25

1 ●Parliament and of the Council of 12 December 2012 on
jurisdiction and the recognition and enforcement of
judgments in civil and commercial matters (recast)” 7(Brussels I Regulation), courts of a CMS would haveinternational jurisdiction in a matter governed by the UPC
Agreement8. The UPC shall have exclusive competencein respect of actions relating to UPs, EPs andsupplementary protection certificates (SPCs) in Article
32(1) of the UPC Agreement.
Courts of CMSs also shall be competent for actions
which do not come within the exclusive competence of

the UPC 9 , on the premise that the courts haveinternational jurisdiction over the actions10. Besides theabove-mentioned Article 32 on exclusive competence of
the UPC, the following provisions are also concernedwith the competence of the courts of CMSs: Article 83(1)on shared competence with the UPC and the courts of
CMSs during a transitional period, and Article 83(3) on
opt-out from exclusive competence of the UPC.
Considering these provisions, the allocation ofcompetence between the UPC and national courts of
CMSs would be as follows11:

Actions in Article 32(1) of the UPC Agreement【Table 1】
UP

During a transitional period

UPC

After a transitional period

UPC

EP and SPC
Opt-in※ Broad interpretation of Article 83(1)UPC and CMS※ Strict interpretation of Article 83(1)Article 32(1)(a)(d) → UPC and CMS
Others → UPC
UPC

Opt-out

CMS

CMS(for the whole lifeof that patent)

Actions which do not fall under Article 32(1) of the UPC Agreement【Table 2】
EP and SPC
UP
Opt-inOpt-out
During and after a transitional
CMS
CMS (= a national court of a Contracting Member State)
period2Parallel Proceedings Brought in the UPC
and in Courts of CMSs : Lis Pendens
Regarding actions relating to opt-in EPs and SPCs
during a transitional period, as ※ in the Table 1 showed,
parallel proceedings will happen between the UPC andcourts of CMSs. In the interests of the harmonious
administration of justice, however, it is necessary tominimize the possibility of concurrent proceedings and toensure that irreconcilable judgments will not be given indifferent Member States12. For this reason, the Brussels I
Regulation has some rules for lis pendens and related
actions in Articles 29 et seq in order to resolve suchparallel proceedings in different EU Member States.
Articles 29 to 32 shall also apply where, during thetransitional period, proceedings are brought in the UPC
and in a court of a CMS, according to Article 71c(2) of
the Regulation.
Article 29 provides that where proceedings
involving the same cause of action and between the same
parties are brought in the courts of different EU Member
States, namely in case of lis pendens, any court other thanthe court first seized shall of its own motion stay its
proceedings or shall decline its jurisdiction until such●time as the jurisdiction of the court first seized isestablished. Where related actions are pending in the
courts of different EU Member States, on the other hand,
all Member States’ courts other than the first seized court
may stay their proceedings or, in certain circumstances,
may decline their jurisdiction under Article 30.
Then, what kind of parallel proceedings between the
UPC and courts of CMSs would be recognized as lis
pendens or related actions? The following consideration
focuses on interpretation of the lis pendens of Article 29.
Requirements for application of Article 29 are thatthe parallel proceedings involve ① the same parties, ②
the same end in view, and ③ the same cause of action13(“the same cause of action” of Article 29(1) consists of② and ③). It is necessary to consider how theserequirements, especially “the same cause of action”
should be interpreted from a new viewpoint, namely aviewpoint of parallel proceedings between the UPC andcourts of CMSs. Regarding this interpretation, it seems
that the both courts would have “the same cause of action”
where the following elements, at least, are met: (A) the
subject matter of both actions, which are brought in the
UPC and in a court of a CMS, should be the same opt-in
2 ●IIP Bulletin 2016 Vol.25

EP and also the same part of the EP; (B) both actions
should be one of the actions in Article 32(1) of the UPC

(I)

(II)

Agreement; and (C) the types of both actions should beeither (a) the same or (b) the following combination:

(ii)

UPC
Action for declaration of
non-infringement of EP
Action for infringement of EP

Action for declaration of non-infringement of EP(iii)

Counterclaim for revocation of EP

Action for revocation of EP(i)

National Courts
Action for infringement of EP(iv)
Action for revocation of EP
Counterclaim for revocation of EP* The above-mentioned elements and this table deal with only EPs, excluding SPCs.
* Combinations of (ii) and (iv) within the table are available to the extent that “an action for infringement or for
revocation of a European patent” in Article 83(1) of the UPC Agreement is interpreted as all EP actions of Article 32(1),not only actions of Article 31(1)(a)(d): this is broad interpretation of Article 83(1) (see the Table 1).
As to (A), it is said that in situations where parallel
proceedings concern the protection of different national
intellectual property rights, it is obvious that theseproceedings do not have the same cause of action14. As
once granted, an EP becomes a bundle of national patents,
such national patents are understood as different 15 .
Therefore, if the subject matter of both actions are thesame EP but not the same part of the EP, these actions
would not have the same cause of action16. For thisreason, this element should be essential.
Regarding (B), lis pendens will not happen between
the UPC and courts of CMSs where either or both actions
do not fall under actions of Article 32(1), as the UPC isunlikely to deal with such actions. Accordingly, thiselement should also be necessary.
Obviously, the same type of actions have the samecause of action ((C)(a)). Even if the types of both actions
are different from each other ((C)(b)), (I) an action for
infringement of an EP and an action for declaration of
non-infringement of an EP would have the same cause ofaction according to a certain ECJ decision17,18. Also, (II)an action for revocation of an EP and a counterclaim forrevocation of an EP would share the same end in view interms of revocation of the EP: accordingly, both actions
would have the same cause of action19. Thus, (I) and (II)would be considered as appropriate combinations20.
These elements are one possible interpretation of“the same cause of action” in Article 29 of the Brussels I
Regulation from the viewpoint of parallel proceedings
between the UPC and courts of CMSs. Again, in the casewhere parallel proceedings correspond with either lis
pendens (Article 29) or related actions (Article 30), there
is a possibility that any court other than the court first
seized may stay its proceedings or decline its jurisdiction.
This means that forum shopping and “torpedo actions”
will happen between the UPC and courts of CMSs as
well. Therefore, litigation strategy would be more
important for opt-in EPs and SPCs during the transitional
period.

●IIP Bulletin 2016 Vol.25

III Laws Applicable before the UPC:
Choice of Law Rules for European
Patent with Unitary Effect (UP)
IssuesThis chapter examines laws applicable before the
UPC, especially choice of law rules for UP issues.
The UPC shall apply Union law in its entirety andshall respect its primacy (Article 20 of the UPC
Agreement). In full compliance with this, when hearing acase brought before the UPC under this Agreement, theCourt shall apply (a) EU law, (b) the UPC Agreement, (c)the European Patent Convention (EPC), (d) otherinternational agreements applicable to patents andbinding on all CMSs, and (e) national law (Article 24(1)).
It is said that this enumeration of sources of laws is
widely perceived as a hierarchy, whereby a source of law
only applies to the extent that the higher ranking source oflaw provides no answer21. The last (e) national law shallbe determined in accordance with Article 24(2): thisprovision enumerates some private international laws to
be referred to in determining the national law. The
following sections examine the private international law,
especially Article 5(3) and Article 7 of the UP Regulation
as well as Article 8 of the “Regulation (EC) No 864/2007of the European Parliament and of the Council of 11 July
2007 on the law applicable to non-contractual obligations”
22(Rome II Regulation), as these provisions are required
to be considered from a new viewpoint, namely aviewpoint of UPs.
1

Laws Applicable to Matters Pertaining to UP
ItselfArticle 5(3) of the UP Regulation is a choice of law
rule for acts against which the UP provides protectionreferred to in Article 5(1) and applicable limitations (“actsand limitations”). A law applicable to this issue of Article
5(3) is determined by referring to Article 7. Here, there
are two important things: One is that the applicable law is3 ●always the law of the participating EU Member State inwhich the UP has unitary effect at the date of registrationof unitary effect23. The other is that substantive laws on
the “acts and limitations” exist in Articles 25 et seq of the
UPC Agreement. Therefore, although the applicable law
under 5(3) of the UP Regulation is determined byreferring to Article 7, this issue shall be governed by thesubstantive laws of the Agreement, which is in effect in
the applicable national law’s country24.
Secondly, Article 7 of the UP Regulation isunderstood as a choice of law rule for the UP as an objectof property25. What is “the UP as an object property”? Asprovisions, which are titled “the Community patent as an
object property” can be found in a so-called Proposal fora Council Regulation on the Community patent26, this
proposal can be used as reference to interpret “the UP as
an object property.” According to this, “the UP as an
object property” seems to mean at least the following
issues: transfer; rights in rem; levy of execution;
contractual licensing; licenses of right; and effects
vis-à-vis third parties. The UP Regulation and others
contain some substantive laws on these matters 27 :however, the laws are not always comprehensive. For
example, notwithstanding that Article 3(2) of the UP
Regulation prescribes transferability of the UP, theprovision does not mention whether the transfer of theright shall be made in writing. Therefore, the latter issue
would be governed by an applicable law under Article 7of the UP Regulation.
2

Laws Applicable to Non-Contractual
Obligations Arising of UP Infringement
Rome II Regulation establishes choice of law rules
for non-contractual obligations arising out of an
infringement of an intellectual property right. The RomeII Regulation preserves the universally acknowledged
principle of “lex loci protectionis,”28 and Article 8(1)states that the law applicable to a non-contractual
obligation arising from an infringement of an intellectual
property right shall be “the law of the country for which
protection is claimed.” However, if the intellectual
property right at stake is “a unitary Community
intellectual property right,” “the law of the country inwhich the act of infringement was committed” of Article
8(2) shall be applied.
Can a UP be recognized as “a unitary Community
intellectual property right”? It seems to be possible, as
although an EP, namely a foundation of a UP, is grantedby the EPC, unitary effect is granted by the UP
Regulation, namely EU Regulation. Accordingly, Article
8(2) may be applied to non-contractual obligations arisingfrom UP infringement.
However, Article 8(2) shall not be applied to issues
governed by “the relevant Community instrument”: incase of the UP, the instrument means the UP Regulation●

and Translation Regulation. In other words, the existenceof UP infringement and the above-mentioned “acts andlimitations” are two sides of the same coin, and the “actsand limitations” are governed by Article 5(3) of the UP
Regulation. As a result, the existence of UP infringement
is likely to be governed not by the Rome II Regulation
but by the UP Regulation (specifically Article 5(3)) 29.
Incidentally, although the UPC Agreement does notcorrespond with “the Community instrument,” theAgreement seems to precede an applicable law under
Article 8(2) of the Rome II Regulation according to
Article 24(1) of the Agreement30.
As a result, it is concluded that the applicable law
under Article 8(2) of the Rome II Regulation will beapplicable 31 to the extent that laws of Articles
24(1)(a)-(d) of the UPC Agreement have no rule to berelied on and also Article 5(3) and 7 of the UP Regulation
are not applied.

IV Examination: From the Viewpoint ofJapanese Private International Law
This chapter considers international jurisdiction overclaims relating to UPs which are brought in Japanesecourts, laws applicable to the claims, and recognition andenforcement of UPC judgments in Japan.
1

International Jurisdiction
Article 3-2 et seq of the Code of Civil Procedure(CCP) regulates international jurisdiction rules. A UP canbe recognized as an intellectual property right which isestablished upon registration of establishment in a foreigncountry (a foreign registered intellectual property right).
Accordingly, existence or absence of Japaneseinternational jurisdiction over a claim relating to the UP
would be judged in the same way as a claim relating to aconventional foreign registered intellectual property right.
This means that on the one hand, a Japanese court will
not have international jurisdiction over a claim to aregistration, existence or absence or effect of the UP: on
the other hand, there is a possibility that the court will
have international jurisdiction over other claims such as aclaim pertaining to UP infringement as well as a claim for
enforcement of UP license agreements under Articles 3-2
et seq of the CCP,.

2

Applicable Laws
This section deals with laws applicable toassignment and licensing contracts of UPs as well as UP
infringement. The Act on General Rules for Applicationof Laws (the Act on General Rules), which is the main
source of Japanese private international law, has no
specific choice of law rule for intellectual property rights.
Firstly, regarding assignments and licensing
contracts of patents, it is common that contractual
4 ●IIP Bulletin 2016 Vol.25

obligations of parties to the contracts should be governedby an applicable law under Articles 7 et seq of the Act onGeneral Rules, while matters pertaining to patent itself
should be subject to lex loci protectionis, namely the lawof the country where the patent is registered. Applying
this common theory to assignments and licensing
contracts of UPs, laws applicable to the former matter
would be determined in the same way as conventional
patents. However, regarding the latter matter, it isnecessary to discuss which country should be identified
as the country where the UP at stake is registered(registered country of a UP). The following are possible
answers to this question: One is that the registeredcountry of a UP is deemed to be Germany, as theEuropean Patent Office administers the related tasks toregistration of unitary effect of UPs32 and the Office islocated in Germany (Munich). The other is that puttingemphasis on international harmonization of judgments,
the registered country of a UP is construed as the country
which is determined by reference to Article 5(3) and 7 of
the UP Regulation, as these provisions seem to be applied
to the matters pertaining to UP itself before the UPC as
well.
Secondly, regarding patent infringement, theSupreme Court of Japan decided on laws applicable toclaims for an injunction and compensatory damages
based on the infringement in the so-called Card Reader
case33. Following this decision, a claim for an injunction
based on UP infringement would be classified as an effectissue of the UP, and a law applicable to this issue would
be the law of the country where the UP is registered,according to the general principle of jori (fairness,reasonableness). The law of the registered country of the
UP would always be a foreign law. This means that theclaim for the injunction based on the UP infringement
would never be approved in Japan, as according to theSupreme Court decision, application of the foreign law
would run counter to the public policy of Japan under
Article 42 of the Act on General Rules: Japan adopts theprinciple of territoriality of intellectual property rights.
On the other hand, a claim for compensatory
damages based on UP infringement would be classified
as a tort, and a law applicable to the claim would bedetermined by Articles 17 to 22 of the Act on General
Rules. Article 17 provides that the applicable law is inprinciple “the law of the place where the result of thewrongful act occurred”: provided however that if theoccurrence of the result at said place was ordinarily
unforeseeable, “the law of the place where the wrongful
act was committed” shall govern.
In case of a wrongful act against a registeredintellectual property right such as a traditional patent, theplace where the result of the wrongful act occurred has
been understood as the country where the right isregistered34. Accordingly, the law of the place where the●

IIP Bulletin 2016 Vol.25

result of the wrongful act against a UP occurred would beconstrued as the law of the registered country of the UP. If
the registered country of the UP is determined byreferring to Article 5(3) of the UP Regulation, forexample, the applicable law under Article 17 of the Act
on General Rules would correspond with a law which the
UPC would apply to the existence of the UP infringement.
This means that this applicable law would be appropriate
in terms of international harmonization of judgments35.
In contrast, this interpretation can also be consideredinappropriate. As unitary effect of the UP extends to anumber of Contracting Member State, the wrongful act
against the UP can happen not only in the registeredcountry of the UP but also in other Contracting Member
States. Accordingly, the following interpretation may also
be available: as the place where the result of the wrongful
act occurred cannot be identified, the law of the place
where the wrongful act was committed may be applicablein accordance with the proviso of Article 17.
According to the Supreme Court decision in theCard Reader case, Article 20 (exception for cases whereanother place is obviously more closely connected) and
Article 21 (change of governing law by the parties) of the
Act on General Rules will be also applied to the claim forcompensatory damages based on UP infringement to theextent that the claim will be classified as a tort.
Additionally, in the case where the tort shall be governedby a foreign law, Japanese law will be applied
cumulatively in accordance with Article 22.
3

Recognition and Enforcement of Judgments
Recognition and enforcement of foreign judgments
in Japan are provided for in Article 118 of the CCP and
Article 24 of the Civil Execution Act, and theseprovisions are likely to be applied to the recognition andenforcement of UPC judgments as well. In other words,
the UPC judgments will be required to meet thefollowing five requirements of Article 118 of the CCP: afinal and binding judgment rendered by a foreign court,
indirect jurisdiction, service, public policy, and mutual
guarantee. As fulfillment of the requirements are assessedon a judgment-by-judgment base, it is natural that some
judgments are recognized and enforced in Japan andothers are not. In case of UPC judgments, however, it isnecessary to pay attention to a requirement of “mutual
guarantee” in particular, as how to interpret a renderingcountry of a UPC (namely, a common court to 25 states)
judgment would affect not only the satisfaction of thisrequirement but also the possibility of recognition andenforcement of the whole UPC judgments in Japan.
A mutual guarantee exists between a renderingcountry and Japan, if there is reciprocity between therendering country and Japan in terms of the recognitionand enforcement system of foreign judgments. In otherwords, the existence of mutual guarantee is out of
5 ●litigants’ hands, and it can also be said that thisrequirement lacks rationality in the context of procedural
laws36. Accordingly, it seems to be desirable that therequirement of mutual guarantee should be interpreted ina way that the requirement would be met as much as
possible. This viewpoint brings the followinginterpretation: a rendering country of a UPC judgment is
considered as the country where a Court of First Instancewhich actually rendered the judgment is located.
According to this interpretation, although some
judgments will not satisfy the requirement of mutual
guarantee37, it will never happen that the whole UPC
judgment will not meet this requirement. Following thisinterpretation, therefore, there is a possibility that the
UPC judgments will be recognized and enforced in Japan
as long as the judgments meet the other requirements as
well.

V Conclusion
Based on all of the above-mentioned examination,
this chapter concludes this research by considering thefollowing question: in which court should claims relating
to UPs and CMS’s EPs be brought?
Firstly, a claim for registration or validity of a UP
and a CMS’s EP should be brought before the UPC or a
court of a CMS (UPC and others)38, as Japanese courts
will not have international jurisdiction over such a claim.
Secondly, although Japanese courts may haveinternational jurisdiction over a claim for an injunction
based on UP and CMS’s EP infringement, the claim will
be refused at the stage of application of an applicable law(a law of the country where the patent is registered,namely always a foreign law in this case) according to theSupreme Court decision in the Card Reader case.
Therefore, this claim should also be brought before the
UPC and others39.
Regarding a claim for compensatory damages basedon UP and CMS’s EP infringement, it seems to be better
that, considering a possibility of enforcement of
judgments, the claim should be brought before the UPC
and others in accordance with their own international
jurisdiction rules40, if an alleged infringer does not havesufficient property in Japan but in EU Member States. In
contrast, if the property of the alleged infringer is locatedin Japan, just in case, the claim should be brought before
a Japanese court in accordance with CCP, as some UPC
judgments would be recognized and enforced in Japanand others would be not. Regarding a law applicable tothis claim, Article 17 et seq of the Act on General Rules
would be applied according to the Supreme Court
decision.
Lastly, the UPC shall not have any competence overa claim for contract issues relating either to UP or EP41.
For this reason, the claim should be brought before courts●of CMSs as well as other States including Japan inaccordance with their own international jurisdiction rules.
The above is the outcome of examinations of rulesin the field of private international law under unitary
patent protection as well as observations on the rules fromthe viewpoint of Japanese private international law.

1

OJ L 361, 31.12.2012, p. 1.
OJ L 361, 31.12.2012, p. 89.
3 OJ C 175, 20.6.2013, p. 1.
4 Article 2(c) of the UP Regulation. Regarding “participating
Member States,” see Article 2(a) of the Regulation.
5 Article 1 of the UPC Agreement.
6 Regarding “Contracting Member States,” see Article 2(c) of the
UPC Agreement.
7 OJ L 351, 20.12.2012, p. 1.
8 See Article 31 of the UPC Agreement and Article 71b of theBrussels I Regulation.
9 Article 32 (2) of the UPC Agreement.
10 International jurisdiction of national courts of EU Member Statesshall be regulated by either Brussels I Regulation or their own
national laws (see Article 6(1) of the Regulation).
11 Answers to FAQ on the UPC’s homepage, which have nobinding effect, are used as reference in order to interpret Article
83(1) and (3) of the UPC Agreement. Available athttps://www.unified-patent-court.org/faq/opt-out (accessed 2
March 2016).
12 Recital 21 of the Brussels I Regulation.
13 Andrew Dickinson and Eva Lein eds., The Brussels I Regulation
Recast, (Oxford University Press, 2015), p. 326.
14 Toshiyuki Kono ed., Intellectual Property and Private
International Law: Comparative Perspectives, (Hart Publishing,2012), p. 101 [Toshiyuki Kono and Paulius Jurčy].
15 See the Opinion of AG Léger in Case C-539/03 Roche
Nederland BV and Others v Frederick Primus and Milton
Goldenberg, para 23. See also James J. Fawcett and Paul
Torremans eds, Intellectual Property and Private InternationalLaw, (Oxford University Press, 2nd ed., 2011), p. 194.
16 Regarding another view, see Justine Pila and Christopher
Wadlow eds, The Unitary EU Patent System, (Hart Publishing,2015), p. 176 [Paul LC Torremans].
17 Case C-406/92, Tatry v. Maciej Rataj [1994] ECR I-5439 para.
45. See Fawcett and Torremans, supra note 15, p. 196;
Torremans, supra note 16, p. 176.
18 Torremans, supra note 16, pp. 176-177. See also, Stefan
Luginbuehl and Dieter Stauder, “Application of Revised Rules
on Jurisdiction under Brussels I Regulation to patent lawsuits,”
JIPLP, 2015, Vol. 10, No. 2, p. 143.
19 “[I]f they [two actions] have the same object, their basis [factualand legal basis] will be the same.” See Ulrich Magnus and Peter
Mankowski eds., European Commentaries on Private
International Law: Brussels Ibis Regulation, (ottoschmidt, 2016),
p. 732 [Richard Fentiman].
20 A combination of an action for EP infringement and an action forrevocation of an EP might be governed by Article 30 of theRegulation.
21 Hoffmann Eitle, The EU Patent Package Handbook: A
Practitioner's Guide, (CreateSpace Independent Publishing
Platform, 2014), p. 117 [Niels Hölder].
22 OJ L 199, 31.7.2007, p. 40.
23 Article 2(a), 7 and 18(2) of the UP Regulation.
24 See Winfried Tilmann, “The compromise on the uniform
2

6 ●IIP Bulletin 2016 Vol.25

protection for EU patents,” JIPLP, 2013, Vol. 8, No.1, pp. 80-81;
Pieter Callens and Sam Granata, Introduction to the Unitary
Patent and the Unified Patent Court: The (Draft) Rules ofProcedure of the Unified Patent Court, (Kluwer Law
International, 2013), p. 29; Niels Hölder, supra note 21, p. 120.
25 Hölder, supra note 21, pp. 119-120; Callens and Granata, supranote 24, pp. 31-33; Tilman Müller-Stoy and Florian Paschold,“European patent with unitary effect as a property right,” JIPLP,
2014, Vol. 9, No. 10, pp. 850-851.
26 Proposal for a Council Regulation on the Community patent, OJ
C 337 E, 28.11.2000, p.278.
27 For example, Article 3(2) of the UP Regulation (transfer andcontractual licensing); Article 8 (licenses of right); Recital 10(grant of compulsory licenses); and Regulation (EU) 2015/848
of the European Parliament and of the Council of 20 May 2015
on insolvency proceedings, OJ L 141, 5.6.2015, p. 19(bankruptcy or like proceedings).
28 Recital 26 of the Rome II Regulation.
29 See Case C-146/13, Spain v Parliament and Council, para 47.
30 See fn. 21 above.
31 See also, Article 15 of the Rome II Regulation.
32 Article 9 of the UP Regulation.
33 Fujimoto v Neuron Corporation (‘Card Reader Case’), 56
Minshū 1551.
34 See Hiroshi Matsuoka, Kokusai Kankei Shihō Nyūmon(Introduction to International Private Law [3rd ed]), (Yuhikaku,2012), p. 123 [Naoshi Takasugi]; Shoichi Kidana, Kokusaichitekizaisanō (International intellectual property law), (Nihon
Hyoronsya, 2009), pp. 251 and 328.
35 However, it is necessary to pay attention to scope of thisapplicable law.
36 See Yasuhei Taniguchi, et. al, eds, Shin hanrei commentary minjisoshōhō 3 saiban (New case commentary on code of civil
procedure 3, trials), (Sanseidō, 1994), p. 244.
37 Judgments given by Nordic Baltic regional division (Stockholm)
could not be met with the requirement, because there is no
mutual guarantee between Sweden and Japan.
38 Regarding international jurisdiction of the UPC and courts of
CMSs as well as allocation of competence between both courts,
see Chapter II 1.
39 Ibid.
40 Ibid.
41 See also, Article 32(1)(a) of the UPC Agreement.

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