15 International Jurisdiction of the Unified Patent Court (*)
Research Fellow: Atsuko YAMAGUCHIThe EU is now carrying forward preparation for the creation of a unitary patent protection (European
patent with unitary effect and Unified Patent Court (UPC)) based on the “patent package.” According to theAgreement on the Unified Patent Court (UPCA; one of the pieces of the patent package), the UPC shallexclusively deal with actions concerning European patents with unitary effect and European patents, andJapanese companies and individuals will be also able to use the UPC. On that basis, this report first clarifies therules for the international jurisdiction of the UPC which have yet to attract attention in Japan.
Next, this report considers the recognition and enforcement of judgments rendered by the UPC in Japan.
For example, when the UPC renders a judgment ordering a Japanese company to pay compensation for damages
based on infringement of a European patent with unitary effect and a court of Japan is requested to enforce thejudgment, will the judgment be able to be enforced? In this regard, it is not clear at present how the requirements
for the recognition and enforcement of a foreign judgment stipulated by Japanese law should be interpreted
because a court of Japan has never been requested to enforce a judgment rendered by a court similar to the UPC.
Therefore, the aforementioned point is considered.

Ϩ Introduction
This study is intended to consider how Japan
is affected by the start of operations of “European
patents with unitary effect” and the “Unified
Patent Court (UPC),” for which the EU is now
carrying forward preparation.
Preparation for the creation of European
patents with unitary effect and the UPC is
ongoing based on the “patent package” on which
the EU reached agreement in 2012.1 The patentpackage consists of two regulations, laying
grounds for the creation of “unitary patent
protection” in the EU (specifically, ͆Regulation(EU) No 1257/2012 of the European Parliamentand of the Council of 17 December 2012
implementing enhanced cooperation in the area ofthe creation of unitary patent protection” (EUUnitary Patent Regulation) 2 and “Council
Regulation (EU) No 1260/2012 of 17 December
2012 implementing enhanced cooperation in thearea of the creation of unitary patent protection
with regard to the applicable translation
arrangements” 3 (Regulation on Translation
Arrangements))4 and one agreement (specifically,“Agreement on the Unified Patent Court” 5(UPCA)). These regulations and agreement are
expected to become applicable within a couple ofyears. That is, it is considered essential toexamine the content of a European patent system
to be established in the near future and its effects

on Japan in order to ensure that discussion will beheld on countermeasures thereon. Therefore, thisstudy clarifies the rules for the international
jurisdiction of the UPC which will be alsoavailable to Japanese companies and individuals
and then considers the effects of this system witha special focus on the question of whether
judgments rendered by the UPC (UPC
judgments) will be able to be recognized andenforced in Japan. Before working on these issues,
the next section creates an overview of European
patents with unitary effect and the UPC, which
are the premises of this study.

ϩ European Patent with Unitary
Effect and the Unified Patent
Court
In the EU, it is now possible to obtain adomestic patent through the authority, such as anational patent office of an EU Member State or
to obtain a European patent (EP) through theEuropean Patent Office (EPO) that exists within
the framework of the Convention on the Grant ofEuropean Patents (European Patent Convention;
EPC).6 In addition to these two kinds of patents,
a European patent with unitary effect becomes a
new option.
European patent with unitary effect means
an EP which benefits from unitary effect in the(*) This is an English translation of the summary of the report published under the Industrial Property Research
Promotion Project FY2014 entrusted by the Japan Patent Office. IIP is entirely responsible for any errors in
expression or description of the translation. When any ambiguity is found in the English translation, the original
Japanese text shall be prevailing.
IIP Bulletin 2015 Vol.24● 100 ●

Contracting Member States7 by virtue of the EU
Unitary Patent Regulation. 8 In order to obtainsuch a patent, the normal EPC procedure should
be completed. After that, unitary effect is granted
retroactively to the time of the grant of an EP if
the patent proprietor submits the request forunitary effect up to one month after the
publication of grant of the EP in the European
Patent Bulletin 9 and the unitary effect isindicated in the Register for unitary patent
protection by the EPO.10
Unitary effect will occur only in EU Member
States that participate in the enhanced
cooperation, and where the UPCA has enteredinto force.11 That is, unitary effect will not extend
to states which have yet to ratify the UPCA, andeven if such a state ratifies the UPCA afterward,
unitary effect will not be extended retroactively.12
The UPC shall exclusively deal with actions
concerning the aforementioned EPs, European
patents with unitary effect, and supplementary
protection certificates, and the UPC isestablished through the UPCA on behalf of EU
Member States which have ratified it. This
Agreement is an international agreement
between the participating countries in theenhanced cooperation which are also Member
States of the EU.13 Therefore, the UPC functions
not as a court common to all EU Member States
but as a court common to the 25 Contracting
Member States, and it is positioned as part of the
judicial system of these states. 14
The UPC shall be subject to the sameobligations under Union law as any national courtof the Contracting Member States.15 That is, as
the UPC is deemed to be a national court under
Union law, the Court of Justice of the European
Union (CJEU) is still guardian of the correct
application and uniform interpretation of Union
law.16 Therefore, regarding the issues of Union
law, the UPC must rely on the case law of the
CJEU, and must also request preliminary rulingsin accordance with Article 267 of the Treaty on
the Functioning of the European Union. 17
Decisions of the CJEU shall be binding on the
UPC.18The UPC will comprise a Court of First
Instance, a Court of Appeal, and a Registry.19 The
Court of First Instance will comprise local
divisions, regional divisions, and the central
division. A local division will be set up uponrequest of a Contracting Member State, and aregional division will be set up upon request of
two or more Contracting Member States.20 The
central division will have its seat in Paris, withsections in London and Munich. The cases before
the central division shall be distributed inaccordance with a classification table that is basedon the International Patent Classification
managed by WIPO.21 The Court of Appeal will be
set up in Luxembourg with the Registry.22
In addition, a training centre intended to
improve and increase judges’ available patent
litigation expertise is set up in Budapest, and apatent mediation and arbitration centre will beestablished in Ljubljana and Lisbon.23

Ϫ International
Competence
Patent Court

Jurisdiction andof the Unified

Next, this Chapter considers the rules forthe international jurisdiction and competence of
the UPC.
Article 31 of the UPCA provides that “[t]heinternational jurisdiction of the Court shall beestablished in accordance with Regulation (EU)No 1215/2012 or, where applicable, on the basis of
the Convention on jurisdiction and therecognition and enforcement of judgments in civil
and commercial matters (Lugano Convention).”24
The “Regulation (EU) No 1215/2012” refers to“Regulation (EU) No 1215/2012 of the European
Parliament and of the Council of 12 December
2012 on jurisdiction and the recognition andenforcement of judgments in civil and commercial
matters” (Brussels I Regulation (recast)). 25
However, according to Article 89(1) of the UPCA,
this Agreement can never enter into force before
the amendment of the Brussels I Regulation(recast) regarding the Agreement enters into
force. Therefore, “Regulation (EU) No 542/2014of the European Parliament and of the Council of
15 May 2014 amending Regulation (EU) No
1215/2012 as regards the rules to be applied withrespect to the Unified Patent Court and the
Benelux Court of Justice” (amending Brussels I
Regulation (recast)) was adopted as theamendment. 26 The latter regulation aims at
ensuring compliance between the UPCA andBrussels I Regulation (recast), and second, ataddressing the particular issue of jurisdiction
rules vis-à-vis defendants in non-European Union
States, 27 and it entered into force on May 30,
2014, and its application was started on January
10, 2015 together with the Brussels I Regulation(recast).28
Article 1 of the amending Brussels I
Regulation (recast) lists Articles 71a to 71d as
rules to be inserted in Chapter VII of the● 101 ●IIP Bulletin 2015 Vol.24

Brussels I Regulation (recast). The following puts
a focus on Article 71b regarding the jurisdiction29of the UPC.30
The Article 71b(1) establishes that the UPC
shall have jurisdiction where, under the Brussels
I Regulation (recast), the courts of a Member
State party to the UPCA (that is, Contracting
Member State) would have jurisdiction in amatter governed by that Agreement. Based on
this rule, the UPC will have jurisdiction any time
when a national court of one of the Contracting
Member States would have jurisdiction based on
the rules of the Brussels I Regulation. In
Contrast the UPC will not have jurisdiction when
no national court of a Contracting Member Statehas jurisdiction pursuant to the Brussels I
Regulation.31 Incidentally, “a matter governed bythat Agreement [the UPCA]” refers to types ofactions listed in Article 32(1) of the Agreementon which the UPC has exclusive competence,
including such as actions for infringements ofpatents and actions for revocation of patents.32
The Article 71b(2) extends the jurisdiction
rules of the Brussels I Regulation (recast) todisputes involving third State defendants
domiciled in third States.33 According to Article 6of this Regulation, if the defendant is not
domiciled in a Member State, in general, thejurisdiction of the courts of each Member State
shall be determined by the law of that Member
State. The first sentence of Article 71b(2) clearlyspecifies that for a matter governed by the UPCA,
whether the UPC has international jurisdiction isdetermined by applying the jurisdiction rules of
the Brussels I Regulation (recast) to such adefendant as well.34
Furthermore, when determining whether the
UPC has international jurisdiction, subsidiaryjurisdiction under Article 71b(3) of the Brussels I
Regulation (recast) is also applicable todefendants under Article 71b(2), in addition to thejurisdiction set forth in Chapter II of theRegulation. That is, where the UPC has
jurisdiction over a defendant under Article 71b(2)in a dispute relating to an infringement of an EP
giving rise to damage within the Union, that court
may also exercise jurisdiction in relation todamage arising outside the Union from such an
infringement. Such jurisdiction may only beestablished if property belonging to the defendant
is located in any Member State party to the UPCA
and the dispute has a sufficient connection withany such Member State.35
Given the UPC has international jurisdiction,
the Court of First Instance of a Contracting

IIP Bulletin 2015 Vol.24

Member State that has competence is thendetermined in accordance with Article 33 of the
UPCA. 36 For example, Company X holds a
European patent with unitary effect, andCompany Y (German company) sells a productthat infringes X’s patent in France and Estonia. In
this case, Company X may bring an action for
infringement of the patent against Company Y
before a local or regional division located in
France or Estonia where the infringement
occurred pursuant to Article 33(1)(a) of the UPCA,
or before a local or regional division in Germany
where Company Y, the infringer, has domicile
pursuant to Article 33(1)(b). 37 In addition,
pursuant to Article 33(3), there is a rule that acounterclaim for revocation may be brought in thecase of an action for infringement. The local orregional division concerned shall, after having
heard the parties, have the discretion to decide
whether or not to combine both the infringement
action and the counterclaim. Incidentally, except
for a certain action, for all other actions theparties can agree to bring them before thedivision of their choice, including the central
division.38
In this manner, the jurisdiction andcompetence of the UPC are decided, and a
judgment is rendered after going through theproceedings. If enforcement of such a judgment isrequested in Japan after the judgment becomes
final and binding, is it admitted? The next
Chapterconsidersthe
recognition
andenforcement of UPC judgments in Japan which is
an issue that has yet to be considered in Japan.

ϫ Consideration: Recognition and
EnforcementofJudgments
Rendered by the Unified Patent
Court in Japan
In Japan, there is a system whereby when ajudgment rendered by a foreign court satisfies
certain requirements, the effect thereof isrecognized in Japan and, based on the recognition,
enforcement of the judgment is also admitted. 39
First of all, it is sufficient to satisfy fiverequirements stipulated in Article 118 of theCode of Civil Procedure in order to obtainrecognition of a foreign judgment, and no special
procedure is required. On the other hand, foradmission of the enforcement of a foreign
judgment, it is necessary that an action seeking
an execution judgment for a judgment of a foreign
court should be brought before a court of Japanand the execution judgment should be given by● 102 ●

the latter court. Moreover, pursuant to Article 24,paragraph 3 of the Civil Execution Act, therelevant judgment of a foreign court must havebecome final and binding and must also satisfy therequirements listed in the items of Article 118 of
the Code of Civil Procedure. In examining thesatisfaction of these requirements, it is prohibitedto examine the finding of facts, etc. byquestioning the content of the foreign judgment,
pursuant to Article 24, paragraph 2 of the Civil
Execution Act. It is considered that the same
applies to the recognition of a judgment of aforeign court.40
At present, there is no movement for
conclusion of a convention concerning therecognition and enforcement of UPC judgments inJapan and the recognition and enforcement of
judgments concerning EPs and European patents
with unitary effect rendered by a court of Japanbetween Japan and Contracting Member States.
Therefore, it can be said that whether a UPC
judgment is recognized and enforced in Japandepends exclusively on the interpretation of theaforementioned requirements for the recognitionand enforcement of a foreign judgment. On thatbasis, in what follows, those requirements are
outlined and are considered from the perspectiveof UPC judgments.
1

Being a final and binding judgment
rendered by a foreign court
The final and binding judgement rendered bya foreign court set forth in the main paragraph of
Article 118 of the Code of Civil Procedure refers
to a judgment rendered in the cases where aforeign organization that exercises jurisdiction, in
general, an office called a court, judges a dispute
between the parties over rights and obligations
based on the court proceedings and consequently
reaches a state where it is impossible to file anappeal by an ordinary method of filing an appeal.41
A special issue regarding this requirement iswhether the UPC falls under a “foreign court” set
forth in Article 118 of the Code of Civil Procedure.
For example, the UPC is a court common to the
25 Contracting Member States. However, does agroup of those 25 Contracting Member States fallunder a “foreign country” as mentioned in the
Article? In this regard, it is considered that the“foreign country” includes the communities offoreign countries,42 and from this standpoint, the
UPC can be considered to fall under the “foreigncountry” as mentioned in Article 118. Moreover,
the UPC seems not to fall under an “international
court”43 that is deemed not to fall under a foreign

court set forth in the Article, taking into accountboth the fact that the UPC is a judicial body which
resolves civil disputes regarding EPs andEuropean patents with unitary effect and thequestion of who has the capacity to be a party tothe proceedings before the UPC. 44 Accordingly,
the UPC is considered to fall under a “foreign
court” set forth in Article 118 at least from theaforementioned perspective.
2

Indirect Jurisdiction
The indirect jurisdiction requirement
stipulated in Article 118, item (i) of the Code ofCivil Procedure requires that a foreign court thathas rendered a judgment has had jurisdiction(indirect jurisdiction) over the relevant case. 45 It
is generally thought that satisfaction of theindirect jurisdiction requirement is determinedbased on whether a rendering state is recognized
to have international jurisdiction in light ofArticles 3-2 to 3-9 of the Code of Civil Procedure,
except for the cases where a court of Japan has
exclusive jurisdiction (Article 3-10 of the Code ofCivil Procedure).46
Although whether a UPC judgment satisfies
the indirect jurisdiction requirement would also
be determined by the aforementioned method,
there is a question about the subject ofdetermination. That is, it is natural to consider
that satisfaction of this requirement isdetermined based on whether a Contracting
Member State where a ground of jurisdiction
stipulated in the Brussels I Regulation (recast) is
located had international jurisdiction from theperspective of the Japanese Code of Civil
Procedure. However, in the case of the UPC,
proceedings are not necessarily conducted in astate which has a ground of jurisdiction stipulated
in the Brussels I Regulation (recast) (that is, byordinary, a state which has international
jurisdiction). In fact, proceedings are actuallyconducted under the UPCA in a state where the
Court of First Instance that has competence islocated. Therefore, the former state and the latterstate may not be the same in some cases. In short,
is it proper to make the former be subject todetermination concerning satisfaction of theindirect jurisdiction requirement despite theexistence of such cases? It seems to be necessary
to consider this point in the future, as well as thepossibility and appropriateness of making thelatter be subject to such determination.
3● 103 ●

Service
The service

requirement

stipulatedin

IIP Bulletin 2015 Vol.24

Article 118, item (ii) of the Code of Civil
Procedure requires that a service of process wasappropriately sent to the defendant who has lostthe case in order to guarantee the right to request
hearing and the right to participate in theproceedings as of the time of commencement of
the proceedings. 47 The Supreme Court has
indicated determination standards for satisfactionof the service requirement. 48 One of thosestandards is that if a convention on judicial
assistance has been concluded between arendering state and Japan and a service of
documents necessary for the commencement of
the court proceedings shall be sent by a method
stipulated by that convention, the method
stipulated by the convention must be observed. In
this regard, Japan is a Contracting State of the1965 “Convention on the Service Abroad of
Judicial and Extrajudicial Documents in Civil or
Commercial
Matters”(HagueServiceConvention). On the other hand, when the UPC
sends a service to a defendant who has a domicile
in Japan, the service will be sent by the method
stipulated by the Convention pursuant to Rule274.1(a)(ii) of the 17th draft of Rules of Procedureof the United Patent Court.49 Therefore, in thiscase, according to the standards indicated by theSupreme Court in relation to determination
concerningsatisfactionoftheservicerequirement, it would be checked whether aservice is sent by a method that observes theHague Service Convention. However, it can besaid that whether a UPC judgment satisfies theservice requirement set forth in Article 118, item(ii) of the Code of Civil Procedure depends on the
UPC
judgment
itself,includingtheaforementioned determination result.
4

Public Policy
The points questioned in relation to the
public policy requirement stipulated in Article
118, item (iii) of the Code of Civil Procedure arewhether the content of a judgment is not contrary
to public policy in Japan (substantive public
policy) and whether the court proceedings are notcontrary to public policy in Japan (proceduralpublic policy).50
Substantive public policy corresponds topublic policy under private international law in achoice of law (Article 42 of the Act on General
Rules for Application of Laws), and thedetermination standards therefor are also thesame as those for public policy under privateinternational law.51 An example foreign judgmentthat was deemed to be contrary to substantive

IIP Bulletin 2015 Vol.24

public policy is a punitive damages judgment
rendered in California.52 However, the UPC will
never render a punitive damages judgment,
pursuant to the proviso to Article 68(2) of the
UPCA.
Regarding the latter procedural public policy,
there may be foreign judgments that become aproblem from the procedural perspective otherthan those that become a problem in terms of theaforementioned indirect jurisdiction and service
requirements. It is the procedural public policy
requirement that deals with foreign judgmentsthat avoided being subjected to procedural checks
by the two requirements.53 An example judgmentthat is contrary to procedural public policy is a
judgment that is rendered with absence of the
independence and neutrality of a judge. However,a UPC judgment seems not to violate the public
policy requirement in this regard as long as the
UPC has a constitution in accordance with Article
17(1) and (5) of the UPCA.
In the aforementioned points, UPC
judgments seem to have a low likelihood of failingto satisfy the public policy requirement. However,the possibility of facing a UPC judgment that does
not satisfy this requirement cannot be denied aslong as satisfaction of the requirement isdetermined with respect to each individual
judgment.
5

Mutual Guarantee
Regarding the “mutual guarantee” stipulated
in Article 118, item (iv) of the Code of Civil
Procedure, where there is reciprocity between
the rendering state and Japan with regard to therecognition and enforcement system of foreign
judgments, it means that a mutual guarantee
exists between the rendering state and Japan.54
The Supreme Court has indicated a determination
standard for the existence of mutual guarantee, 55
and this standard is widely accepted. 56
In determining whether a UPC judgment
satisfies this requirement, with what state is amutual guarantee required to satisfy thisrequirement? As the UPC is a court common to
the 25 EU Member States party to the UPCA, a“rendering state” subject to comparison anddetermination regarding satisfaction of the mutual
guarantee requirement is not clear. For thisreason, such a question will arise. Regarding
interpretation of such “rendering state,” mycurrent private views are as follows.
The first view is as follows: UPC judgments
do not satisfy this requirement because thesubject of determination concerning existence of● 104 ●

mutual guarantee is not clear as a rendering stateshould not be specified or should be specified but
cannot be specified. According to this view, all
UPC judgments do not satisfy this requirement,
and can never be recognized and enforced inJapan.
Contrary to this, in the case of consideringthat a rendering state should be specified and canbe specified, possible methods are (A) a method
wherein the 25 states are considered to comprise
one legal jurisdiction and (B) a method wherein
one state is chosen from the 25 states (example
methods of choosing one state are (a) a method
wherein a state where the Court of First Instancethat has actually rendered the judgment is locatedis considered to be a rendering state and (b) amethod wherein a state that has international
jurisdiction under the Brussels I Regulation(recast) is considered to be a rendering state).
Regarding Method (A), the propriety ofrecognition and enforcement of a judgment
rendered by a court of Japan in EU Member
States is determined in accordance with thedomestic law of each EU Member State,irrespective of whether the judgment concerns a
European patent with unitary effect. In otherwords, as each EU Member State sets therequirements for the recognition and enforcementof a foreign judgment, a mutual guarantee exists
between Japan and some EU Member States suchas Germany and the United Kingdom, while themutual guarantee does not exist between Japanand another state such as Sweden, because thelatter state requires existence of a convention
to recognize the effect of a foreign judgment 57
Therefore, it seems to be impossible to consider
the 25 EU Member States to comprise one legal
jurisdiction and to conclude that a mutual
guarantee “exists” or “does not exist” between
Japan and the said legal jurisdiction.
Regarding the latter Method (B), a matterthat can be pointed out in relation to both
Methods (a) and (b) is the question of whether itis originally appropriate to see the existence of amutual guarantee between a state specified bythese methods and Japan. Moreover, existence ofa mutual guarantee, and then, the propriety ofrecognition and enforcement, can be affected by
the state which is specified as a rendering state.
Even so, is it considered appropriate to specify arendering state by such methods?
In this manner, interpretation of a “rendering
state” significantly affects the question ofwhether a UPC judgment satisfies the mutual
guarantee requirement, and consequently, it will

also affect the propriety of the recognition andenforcement of the UPC judgment. Therefore, itis necessary to hold active discussions in the
future on such issues as whether Japan takes astance of actively recognizing and enforcing UPC
judgments.

Ϭ Conclusion
Regarding the European unitary patent
protection of which operations will be started in
the near future, this study first focused on therules for the international jurisdiction of the UPC
and clarified them. These rules have yet to attract
attention in Japan, but it is considered useful tomake clear the content thereof as long asJapanese companies and individuals can also use
the UPC. Next, the effect of this patent protection
was considered with a focus on whether
judgments rendered by the UPC can berecognized and enforced in Japan. This is because,in the present situation, how to interpret therequirements for the recognition and enforcementof foreign judgments stipulated by Japanese law is
not clear because Japan has never been requested
to recognize and enforce a judgment rendered bya court like the UPC. At last, I want to briefly sum
up considerations of these two points and express
my private view.
First, regarding the former point, the rules
for the international jurisdiction of the UPC, an
unprecedented method for deciding international
jurisdiction was adopted. Specifically, when any
national court of the Contracting Member Stateshas jurisdiction based on the Brussels I
Regulation (recast), the UPC shall have(international) jurisdiction. Moreover, differingfrom the past, when determining whether the
UPC has international jurisdiction, the Brussels I
Regulation (recast) shall apply to a defendant who
has no domicile in the EU Member States as well.
Furthermore, a rule of subsidiary jurisdiction(Article 71b(3) of the Brussels I Regulation(recast)) that was newly set in the amending
Brussels I Regulation (recast) is also applicable tosuch a defendant. It is pointed out in the EU thatthe jurisdiction stipulated by this rule falls under
exorbitant jurisdiction. 58 It is worth paying
attention to how this rule and other international
jurisdiction rules which have been applied to thenational courts of the EU Member States in thepast, including theories formed throughaccumulation of judicial precedents, will beapplied to determinations concerning whether the
UPC has international jurisdiction.

● 105 ●IIP Bulletin 2015 Vol.24

Next, regarding considerations concerning
the latter point, the propriety of the recognitionand enforcement of UPC judgments in Japan, no
foreign judgment can be recognized and enforced
in Japan unless it satisfies all of the fiverequirements stipulated in Article 118 of theCode of Civil Procedure. Needless to say, giventhat whether a foreign judgment satisfies theserequirements is determined with respect to each
foreign judgment, there will naturally be
judgements that can be recognized and enforced
or otherwise. However, out of the fiverequirements, the requirements: being a “final
and binding judgment rendered by a foreign court”
and existence of a “mutual guarantee,” would
affect the propriety of the recognition andenforcement of UPC judgments as a whole. Thisis because if the UPC does not fall under a“foreign court” set forth in Article 118 or if a“rendering state” of UPC judgments cannot be
specified, all the UPC judgments do not satisfy
these requirements and then cannot berecognized and enforced in Japan. In this regard,
as considered in Chapter IV, the UPC isconsidered to be able to fall under a “foreign
court” set forth in Article 118, but it isconsidered necessary to examine satisfaction of
the mutual guarantee requirement again, pending
future discussions. Therefore, my present private
view is that there is both the possibility that UPC
judgments as a whole will be recognized andenforced in Japan and the possibility that they will
not. On this basis, it can be said that, at least
when bringing an action for damages based on
infringement of a European patent with unitaryeffect, it is important to decide before which court
one brings the action, the UPC or a court of Japan,
in anticipation of enforcement of a judgment
rendered.
The above is the outcome of this study. I
would like to further deepen this study by
expanding the subject of consideration andconducting constant reexamination in hope that
this outcome provides a material for future
discussions.

1

2
3
4

European Commission(http://ec.europa.eu/internal_market/indprop/patent/in
dex_en.htm) (opened March 4, 2015).
OJ L 361, 31.12.2012, p. 1.
OJ L 361, 31.12.2012, p. 89.
The “enhanced cooperation” mentioned in the titles ofboth of those regulations is one kind of differentiatedintegration, and it enables multiple EU Member States

IIP Bulletin 2015 Vol.24

to advance integration as a last resort in the cases
where the EU cannot adopt a instrument (Yumiko
Nakanishi, Ʈǌhǀ (EU law) (Shinseisha, 2012), p. 129).
Incidentally, 25 EU Member States, except for Italy,
Spain, and Croatia, participate in the enhanced
cooperation in the area of the creation of unitary patent
protection.
5
OJ C 175, 20.6.2013, p. 1. 25 EU Member States,
except for Poland, Spain, and Croatia, signed thisAgreement, and Austria, Belgium, Denmark, France,
Malta, and Sweden ratified it (as of March 4, 2015).
However, this Agreement has yet to enter into force atpresent as its entering into force requires its
ratification by 13 Member States, including France,
Germany, and the United Kingdom (Article 89(1) of theUPCA). The application of the aforementioned two
regulations will start on the date on which thisAgreement enters into force (Article 18(2) of the EU
Unitary Patent Regulation and Article 7(2) of theRegulation on Translation Arrangements).
6
Convention on the Grant of European Patents(European Patent Convention) of 5 October 1973.
7
The Contracting Member States refer to EU Member
States party to the UPCA (Article 2(c) of the UPCA).
8
Article 2(c) of the EU Unitary Patent Regulation.
9
See Article 9(1)(g) of the EU Unitary Patent Regulation
and Article 14(1) and (3) of the EPC with regard to thelanguage of the proceedings. Incidentally, a request forunitary effect may be filed after the start of applicationof the EU Unitary Patent Regulation (see Article 2(c) of
the EU Unitary Patent Regulation).
10
See Article 9(1)(h) of the EU Unitary Patent
Regulation. However, during the transitional period, it
is necessary to also submit the translations required
under Article 6 of the Regulation on Translation
Arrangements (see Article 9(1)(h) of the EU Unitary
Patent Regulation).
11
See supra notes 4 and 5. Incidentally, there aredifferent views about the time based on which thescope to which unitary effect extends is determined.
See Pieter Callens and Sam Granata, Introduction to the
Unitary Patent and the Unified Patent Court: The (Draft)
Rules of Procedure of the Unified Patent Court, (Kluwer
Law International, 2013), p. 25; Hoffmann Eitle, The
EU Patent Package Handbook: A Practitioner's Guide, pp.
52-53 [Thorsten Bausch and Clemens Tobias Steins].
12
See Bausch and Steins, ibid.
13
See Callens and Granata, supra note 11, p. 51.
14
Article 1, Article 21, and seventh paragraph of thepreamble of the UPCA.
15
Article 1 of the UPCA.
16
Tenth paragraph of the preamble and Article 21 of the
UPCA.
17
Tenth paragraph of the preamble and the first sentenceof Article 21 of the UPCA.
18
Second sentence of Article 21 of the UPCA.
19
Article 6(1) of the UPCA.
20
Article 7(3) of the UPCA and the first sentence ofparagraph 5 of the said Article. Incidentally, in March
2014, Estonia, Latvia, Lithuania, and Sweden agreed to
set up a regional division in Stockholm (European
Commission - STATEMENT/14/46 04/03/2014).
21
Article 7(2) and Annex II of the UPCA.

● 106 ●

22

Article 10(1) of the UPCA.
Article 19 and Article 35(1) of the UPCA. Incidentally, a
training centre for judges was officially opened on
March 13, 2014 (EPO
<http://www.epo.org/news-issues/news/2014/20140313.html>) (opened March 5, 2015)).
24
JETRO<http://www.jetro.go.jp/world/europe/ip/pdf/20130219_
2.pdf> (access date: March 5, 2015).
25
OJ L 351, 20.12.2012, p. 1.
26
OJ L 163, 29.5.2014, p. 1.
27
See Proposal for a Regulation of the European
Parliament and of the Council amending Regulation(EU) No 1215/2012 on jurisdiction and the recognitionand enforcement of judgments in civil and commercial
matters, COM (2013) 554 final, 26.7.2013, p. 2.
28
Article 81 of the Brussels I Regulation (recast) and
Article 2 of the amending Brussels I Regulation(recast).
29
While the term “international jurisdiction” is used in
the UPCA, the term “jurisdiction” is used in theamending Brussels I Regulation (recast). Hereinafter,
the latter is used in the context of this Regulation.
30
Article 71a is a rule for the positioning of the UPC in
the Brussels I Regulation (recast), Article 71c is a rule
for lis pendens, and Article 71d is a rule for therecognition and enforcement of judgments. For details,
see the body text of this report.
31
See COM (2013) 554 final, 26.7.2013, p. 5.
32
The national courts of the Contracting Member Statesremain competent for actions that do not come within
the exclusive competence of the UPC (Article 32(2) of
the UPCA). However, during the transitional period
stipulated in Article 83 of the UPCA, there are
exceptions to the exclusive competence of the UPC(sharing of competence with national courts; opt-out)(see the said Article).
33
See COM (2013) 554 final, 26.7.2013, p. 6. Also see
Recital (6) of the amending Brussels I Regulation(recast).
34
Ibid. In addition to this, the second sentence of Article
71b(2) provides that application may be made to the
UPC for provisional, including protective, measureseven if the courts of a third State have jurisdiction as tothe substance of the matter.
35
For details, also see Recital (7) of the amending
Brussels I Regulation (recast).
36
See Recital (5) of the amending Brussels I Regulation(recast).
37
Hoffmann Eitle, The EU Patent Package Handbook, A
Practitioner's Guide, p. 102 [Holger Stratmann].
38
Article 33(7) of the UPCA.
39
Hiroshi Matsuoka, ed., Kokusaikankei shihǀnyǌmon(Introduction to private international law [3rd ed.])(Yuhikaku, 2012), p. 300 [Mari Nagata].
40
Ibid., p. 302.
41
Mikio Akiyama, et al, KonmentƗru minjisoshǀhǀ II(Commentary on the Code of Civil Procedure II)(Nippon Hyoron Sha, 2002), p. 447.
42
Hajime Kaneko, Jǀkai minjisoshǀhǀ (Article-by-article
explanation: Code of Civil Procedure) (Koubundou, 2nded., 2011), p. 624 [Morio Takeshita].
43
Wakamizu Tsutsui, ed., Kokusaihǀjiten (International23

law dictionary) (Yuhikaku, 1999), pp. 101-103 (seeinternational trial and international court).
44
Article 46 of the UPCA.
45
Nagata, supra note 39, p. 304.
46
Yasunori Honma, Shunichiro Nakano, and Hajime Sakai,
Kokusaiminjitetsudukihǀ
(International
civil
proceeding law) (Yuhikaku, 2nd ed., 2012), p. 185[Shunichiro Nakano].
47
Nagata, supra note 39, p. 306.
48
Judgment of the Supreme Court of April 28, 1998
(Minshu, Vol. 52, No. 3, at 853).
49
The 17th draft of Rules of Procedure of the Unified
PatentCourt<http://www.unified-patent-court.org/images/documen
ts/UPC_Rules_of_Procedure_17th_Draft.pdf> (opened
March 6, 2015).
50
Nagata, supra note 39, p. 308.
51
Yasushi Nakanishi, et. al, Kokusai shihǀ (Privateinternational law) (Yuhikaku, 2014), p. 191. Nagata,ibid., pp. 308-309.
52
Judgment of the Supreme Court of July 11, 1997
(Minshu, Vol. 51, No. 6, at 2573).
53
Nakanishi, supra note 51, p. 190.
54
See Takao Sawaki and Masato Dogauchi, Kokusai shihǀ
nyǌmon (Introduction to private international law)
(Yuhikaku, 7th ed., 2012), p. 334.
55
Judgment of the Supreme Court of June 7, 1983
(Minshu, Vol. 35, No. 5, at 611).
56
Nagata, supra note 39, pp. 313-314.
57
Ibid., p. 314. See Michael Bogdan, Private International
Law in Sweden, (Kluwer Law International, 2012), p.
127 at 312.
58
Pedro Alberto de Miguel Asensio, “The Unified Patent
Court Agreement and the Amendment to the Brussels I
Regulation (recast),” in Luci e ombre del nuovo sistema
UE di tutela brevettuale, (G. Giappichelli Editore,2014), pp. 153-170.

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