Ireland’s Hokey Cokey* with the UPC continues

Meanwhile, is Ireland unaffected by the UPC?

 

It seemed safe to assume that the UPC could not have jurisdiction over EU states that have not yet ratified the UPC Agreement, like Ireland. However, in June 2024, that assumption was called into question by a peculiar decision of the Hague Local Division of the UPC’s Court of First Instance.

 

In the case of Abbott Diabetes Care, Inc. vs. Sibio Technology Limited and Umedwings Netherlands BV, the Local Division granted an injunction in relation to a European patent that is in force in Germany, France, the Netherlands and Ireland. Apparently, the Local Division considered itself competent to grant the injunction with effect in Ireland even though Ireland has not yet ratified the UPC Agreement.

 

So, could Ireland be out of the UPC, yet also in it?

 

The decision of the Local Division raised the unwelcome possibility of Irish businesses being subject to the powers of the UPC without enjoying the benefits of the UPC themselves, at least until Ireland eventually ratifies the UPC Agreement. By implication, states that have signed but not yet ratified the UPC Agreement, like Ireland, could have been in a worse position than states that are not party to the UPC at all. The decision would have left Ireland in the uncomfortable position of being subject to UPC jurisdiction while being unable to play an active part in the operation or evolution of the UPC system.

 

No, out means out!

 

Thankfully, in an Order issued in August 2024, the UPC’s Court of Appeal set aside the decision of the Local Division and confirmed that litigants seeking to enforce patent rights in Ireland cannot currently rely upon the UPC to do so. The Court of Appeal decided that a state that has merely signed the UPC Agreement can only be regarded as a ‘Contracting Member State’ after also ratifying the Agreement. It was therefore “manifestly erroneous” for the Local Division to have decided that the requested injunction could extend to Ireland.

 

Conclusion

 

The Court of Appeal has provided welcome clarity on the jurisdictional effect of the UPC. Ireland is outside the UPC until Irish voters say otherwise, and meanwhile it is clear that Ireland will remain fully out.

 

But perhaps that’s not the whole story. Possibly, the principle of mutual recognition of national or regional court judgments within the EU could allow the UPC to extend its effective reach beyond the countries that have ratified the UPC Agreement. So, it remains the case that Ireland is better off ‘in’ and participating fully in the UPC dance rather than ‘out’ and watching from the sidelines, in imaginary isolation.

 

 

* Or, ‘Hokey Pokey’ to our friends in North America