Ruling ‘further extends UPC’s reach’
A lawyer specialising in patents has said that non-EU companies with European representatives will need to account for a new ruling that has asserted the Unified Patents Court’s (UPC’s) jurisdiction outside Europe.
The ruling came after electronics manufacturer Dyson sought an injunction to stop a company based in Hong Kong from infringing its patent and selling a hair curler.
that the UPC could grant an injunction against a non-EU company in this case, as the firm had an authorised representative established in a country that was a member state of the court.
Authorised representative
Because the Hong Kong company, Dreame International, needed to have a Europe-based authorised representative to sell its products in line with European safety regulation obligations, the court ruled that it fell under its purview, despite being based outside the continent itself.
In , law firm Pinsent Masons says that the ruling opens the door to the UPC broadening its international jurisdiction to a much wider sweep than companies based in the court’s member territories.
Patent specialist Catherine Drew says: “The ‘anchor defendant’ being a European-domiciled defendant, as in this case, draws into the jurisdiction of the UPC a defendant domiciled outside of Europe – which in this case is Hong Kong.”
Consequences
Pinsent Masons points out that the UPC has previously ruled that its scope extends to European countries that are not members of the court – such as Britain – when the rights of companies in member states would be affected.
It says that this new ruling extends that reach further – to any company that has an authorised representative established in a member state of the court.
The firm quotes from the ruling, noting that the court acknowledges the consequences of its decision: “This burden … does not seem to be unfair, as the rational of having an authorised representative is to have the distribution channels under the effective control of the relevant authorities by having a representative that must report to them. Furthermore, it is the manufacturers choice, whom, and where to assign this role to.”
Ireland has signed the agreement that set up the UPC, but the Government last year postponed the referendum that was needed to enable it to ratify the deal.