Key takeaways
The UPC has jurisdiction for the central revocation action even if a prior national revocation action is pending
The asserted patent is only validated in Germany.
In 2021, Nokia Solutions and Networks GmbH & Co. KG filed a national revocation action with the German Federal Patent Court (GFPC) against the proprietor (Mala Technologies), which was dismissed by the GFPC in 2023 and the decision was served in December 2023.
On 15 December 2023, one day after the service from the GFPC, Nokia Technology GmbH filed a central revocation action with the UPC Paris CD.
On 15 January 2024, Nokia Solutions and Networks GmbH & Co. KG filed an appeal against the decision of the GFPC.
The Paris CD decided that the UPC has jurisdiction even though a prior national revocation action is pending.
Art. 29 to 32 Brussels I Reg recast (“BR”) and the relation to Art. 71a – 71d BR
The Paris CD decided that there is no direct applicability of Art. 29 to 32 BR to the UPC because the UPC is a “common court” (Art. 71a (1), (2a) BR), i.e., not a court of a Member State as required by Art. 29 to 32 BR.
Art. 71a (1) BR is not applicable to the UPC, otherwise Art. 71c (2) BR would be superfluous.
A literal application of Art. 71c (2) BR is not possible in the case-at-hand because the German revocation action was lodged before the transitional period, i.e., not within the transitional period as required by Art. 71c (2) BR.
Application of Art. 71c (2) BR by analogy is also not possible because there is no unintended gap and a similarity of the interests. As a general principle, national and international courts can act independently. Moreover, a party which filed a lawsuit in a national court before the entry into force of the UPCA should not be barred from filing a lawsuit before the UPC.
Division
Paris (FR) Central Division
UPC number
UPC_CFI-484/2023
Type of proceedings
Revocation action. Preliminary objection.
Parties
Applicant (=Defendant in the main proceedings): Mala Technologies Ltd. = proprietor of patent-in-suit
Defendant (=Claimant in the main proceedings): Nokia Technology GmbH
Patent(s)
EP 2 044 709 B1 (valid only in Germany)
Jurisdictions
UPC, German Federal Court of Justice
Body of legislation / Rules
Art. 29-31 Brussels I Reg, Art. 71a – 71d Brussels I Reg recast
