Where are all the dead pigeons? Proposed amendment to the Brussels I-Regulation prepares the ground for the Unified Patent Court

Pre-script posted 6 June: the amending Regulation was adopted in April (and published as Regulation 542/2014). The assets rule which it includes prima facie only applies for damage taking place outside the EU resulting from non-doms’ infringement. How and whether the assets rule applies vis-a-vis damage inside the EU caused by non-doms is still not clear. You may want to read the ‘comments’ section under this posting for clarification.

 

The proposal to amend Regulation 1215/2012 is due to be adopted by the European Parliament before its election recess. It forms part of the rather complex set of arrangements to introduce the Unified Patents Court – an oxymoron indeed. Leaving aside the complex set of arrangements at the substantive law level, I just wanted to highlight one or two interesting charachteristics at the pure conflicts /jurisdiction level.

The proposed amendment has a twofold objective. Firstly, to ensure compliance between the UPC Agreement and the recast Brussels I Regulation. So far so uncontested. These revisions concern in particular the clear inclusion of the UPC (as well as the Benelux Court) within the Regulation’s definition of a ‘court’; and the revision of the (rather complex)  regime of Article 71 with respect to international agreements and their relationship with the Brussels I Regulation.

The second objective however is misleadingly represented as necessarily forming part of the UPC package: the issue of jurisdiction vis-a-vis defendants not domiciled in the EU (see inter alia here for earlier postings on non-EU domiciled defendants). The newly inserted Article 71b essentially and as a rule lets the ‘common courts’ (i.e. the UPC and the Benelux Court) usurp national jurisdiction (for those States that have subscribed to the common court – remember this is an instrument of enhanced co-operation):

1. The common court shall have jurisdiction where, under this Regulation, the courts of a Member State party to an agreement establishing a common court have jurisdiction in a matter governed by that agreement.

It then prima facie at least suggests that all jurisdictional rules of the Regulation apply regardless of third State domicile:

2. Where the defendant is not domiciled in a Member State, and this Regulation does not otherwise confer jurisdiction over him, the provisions of Chapter II shall apply as if the defendant was domiciled in a Member State. Article 35 shall apply even if the courts of non-Member States have jurisdiction as to the substance of the matter.

Chapter II includes all jurisdictional rules: including the basic rule of domicile of the defendant (the new Article 4, previously Article 2).

This prima facie conclusion is supported by the (proposed) newly inserted sentence in recital 14:

“Uniform jurisdiction rules should also apply regardless of the defendant’s domicile in cases where courts common to several Member States exercise jurisdiction in matters coming within the scope of application of this Regulation”

The newly proposed Article 71b (3) however then would seem to contradict this by stating

3. Where the defendant is not domiciled in a Member State and no court of a Member State has jurisdiction under this Regulation, the defendant may be sued in the common court if:
a) property belonging to the defendant is located in a Member State party to the agreement establishing the common court;
b) the value of the property is not insignificant compared to the value of the claim;
c) the dispute has a sufficient connection with any Member State party to the agreement establishing the common court.

Now I am getting very confused: if, per Article 71b (2), jurisdiction shall be determined ‘as if the defendant was domiciled in a Member State’, how then can there still be a calling for Article 71b (3)? Is it because the proposal aims to introduce a reflexive application (meaning one which also works where the exclusive jurisdictional ground points away from the EU) of Article 22(4) [Article 24(4) in the new Regulation] – i.e. the exclusive jurisdictional ground for registration or validity of intellectual property rights?

Interestingly, Article 71b(3) (proposed) reinstates, for the common courts and whence for patent disputes only, the ‘assets’ rule vis-a-vis third State defendants which the European Commission had failed to introduce as a general rule in the recast Regulation (these are the dead pigeons of the title of current posting).

It is also noteworthy that the proposal acknowledges that courts in third States may have jurisdiction, and that in that case EU (common) courts may still issue provisional measures.

No doubt there may be some kind of explanation for my confusion. I should be glad to hear it.

Geert.

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  1. #1 by Steve Peers on 16/01/2014 - 9:06 AM

    It looks like the Council’s general approach (yet to be negotiated with the EP) would amend the text you are discussing here – does that change your analysis? See: http://register.consilium.europa.eu/doc/srv?l=EN&t=PDF&gc=true&sc=false&f=ST%2016982%202013%20ADD%201

    • #2 by Geert Van Calster on 16/01/2014 - 9:53 AM

      Many thanks indeed Steve, the link to the Council doc on Oeil did not lead to pop ups any time I had checked. Council GA does clarify one or two things. In particular, it provides more detail of the criteria that will feed into the application of the assets rule. It also further explains the need for extra jurisdictional rules (the fact that Common Courts do not have residual, national jurisdictional rules to fall back on where the Regulation in ordinary does not apply). However it maintains the awkward provision that Chapter II will apply regardless of the defendant’s domicile, adding ‘as appropriate’ (not specifying that appropriateness only exists in application of the assets rule, for instance) and deleting the provision ‘as if the defendant was (sic) domiciled in a Member State’. It does not clarify whether Article 24(4) applies reflexively.
      If I were Council, EP or EC, I would make the link to residial jurisdiction (Article 6) much clearer, drop the reference to pretend domicile of the defendant, and focus solely on the assets rule (resurrecting indeed the dead pigeons for patent infringement only). Geert.

  2. #3 by Steve Peers on 31/01/2014 - 8:58 AM

    There’s now a deal between the EP and the Council, which consists of the Council’s general approach with some amendments. Does this help at all? http://register.consilium.europa.eu/doc/srv?l=EN&t=PDF&gc=true&sc=false&f=ST%205870%202014%20INIT

    • #4 by Geert Van Calster on 05/02/2014 - 5:47 PM

      Dear Steve, thank you again. The amendments essentially confirm the Council GA. This as noted is helpful however I still think it would be much better to further specify ‘as appropriate’ as linking specifically (and exclusively) to the assets rule. Lest of couse that is not what the Institutions want, in which case (see my post on the USSC in Daimler coming up this Friday) the EU further undermine what the USSC suggested as the EU’s respect for comity in resisting jurisdiction.

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