Does the ‘Long Arm’ of the UPC Reach Turkey?

After long years of deliberation, the Agreement establishing the Unified Patent Court (“Agreement”) was accepted on majority of the European Union (EU) member states in 2013 and entered into force on 01 June 2023.

The Unified Patent Court (UPC) was envisaged as a common court for the member states party to the Agreement. And thus, the UPC became part of the judicial system of the member states party to the Agreement and was authorised to resolve disputes concerning European Patents with unitary effect and European Patents granted by the European Patent Office (EPO).

As the scope of the jurisdiction of the UPC shall include European Patents granted by the EPO, the question arises whether countries that are party to the European Patent Convention (“EPC”) but cannot be a party to the Agreement are affected by the decisions of the UPC concerning European Patents.

Although the UPC shall be a competent court for resolution of disputes related to European Patents, it would not be contrary to the logic of law to discern that the countries party to the EPC but not to the Agreement should be excluded from the proceedings of the Court. A decision of the UPC on the infringement or invalidity of a European Patent will not be binding before the Turkish courts or the Türkiye in accordance with the principle of territoriality of the jurisdiction of the courts.

However, in the case of European Patents, one of the patents falling within the jurisdiction of the UPC, the EU did not want the Court to limit its jurisdiction solely to the countries party to the Agreement, arguing that as the patent in question is a European Patent, then the jurisdiction of the UPC should be able to extend to all countries in which a particular European Patent is valid, even if the country is not a party to the Agreement.

Since the UPC, as a common court for the Member States party to the Agreement, is not subject to Regulation (EU) No. 1215/2012 of the European Parliament and of the Council on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters (known in short as “Brussels IA”), the Brussels IA Regulation was amended by Regulation (EU) No. 542/2014 of the European Parliament and of the Council of 15 May 2014 (“Brussels IB”) and with such amendments, it was integrated into the EU judicial system.

Through the Brussels IB amendment, the jurisdiction of the common court has been regulated and it has been stated that where the courts of a Member State party to the Agreement would have jurisdiction in a matter regulated by the Agreement, the common court would also have jurisdiction. Hence, it has become clear that the UPC shall be a competent court in all cases where the national courts of the EU Member States party to the Agreement are competent in matters regulated by the Agreement.

The Article 71b, paragraph (3) of the Brussels IB Regulation, granted the UPC jurisdiction over defendants who are not domiciled in an EU state in respect of acts of patent infringement occurring in countries that cannot become parties to the Agreement because they are not members of the EU, by granting the UPC “property-based subsidiary international jurisdiction” if certain conditions are met.

Before amendments of Brussels IB 71b(3) were finalised, an example of a “Turkish defendant” was specifically discussed during the travaux preparatoires on Art. 71b (3) Brussels IB for the proposed amendment,

“For instance, with respect to the Unified Patent Court, the asset-based jurisdiction would ensure that the Court would have jurisdiction vis-à- vis a Turkish defendant infringing a European patent covering several Member States and Türkiye.”

This example states that the purpose of the provision is to allow the UPC to award damages against a defendant for infringing a European patent, even if the defendant is domiciled in a country that is a party to the EPC but not a party to the Agreement establishing the UPC.

Although not explicitly clear in the provision, by the nature of the proceedings, the UPC must first conduct an infringement trial and establish the existence of the infringement before exercising the jurisdiction conferred under Article 71b(3) to award damages.

Article 71b(3) of the Brussels IB Regulation, which does not require or condition its application on an infringement ruling by the competent courts of a non-EU state, in fact grants the UPC the authority to determine the existence of an act of infringement of a European patent occurring in a non-EU state. It also allows the UPC to award compensation for damages incurred by the patent holder within or outside the EU as a result of such an act.

As noted above, the UPC is a common court for the European Union. However, for a non- EU state such as Türkiye, no such transfer of authority exists. Nevertheless, with the regulation introduced by Article 71b(3) of the Brussels IB Regulation, it has become possible for a Turkish defendant, who is not domiciled within the EU, to be held liable for damages by the UPC. The extent to which this person can exercise their right of defence in the context of the UPC proceedings is left unclear. In the European Commission’s proposal explaining the necessity of the regulation introduced by Article 71b(3) of the Brussels IB Regulation, it was stated that the provision serves to “balance” the situation arising when a defendant in a European patent infringement case is not located within the EU. However, how this balance would be ensured in the case of a Turkish defendant, as illustrated by the example presented during the travaux preparatoires was not discussed. Since Turkish citizens were specifically mentioned during the travaux preparatoires regarding Article 71b(3) of the Brussels IB Regulation, it is likely that defendants will seek certain countermeasures before Turkish courts. One such measure that comes to mind is the anti-suit injunction (“ASI”), which has gained significant popularity in recent years.

Although Turkish courts have not yet issued an ASI, in principle, it is possible to issue such a measure based on the general provisions governing interim injunctions. A Turkish defendant facing the long-arm jurisdiction of the UPC may file an action before Turkish courts and request a preliminary injunction to prevent the party alleging patent infringement from filing an action before the UPC or, if an action  has already been filed, to prevent them from seeking interim or similar measures in that case.

First published by ManagingIP in Jan 17, 2025.