Non-EU companies with European representatives will need to account for a new ruling that has asserted the Unified Patents Court’s jurisdiction outside Europe, an expert has revealed.
The ruling came after electronics manufacturer Dyson sought an injunction (39-page /1.61MB PDF) to stop a company based in the Hong Kong Special Administrative Region (SAR) from infringing its patent and selling a hair curler.
The court’s Hamburg local division ruled the UPC can grant an injunction against a non-EU company in this case as the firm had an authorised representative established in a country which is a member state of the court.
Because the company, Hong Kong SAR-based Dreame International, required a Europe-based authorised representative to sell its products in Europe in order to meet safety regulation obligations, the court ruled it fell under its purview, despite being based outside the continent itself.
The ‘anchor defendant’ ruling opens the door to the UPC broadening its international jurisdiction to a much wider sweep than simply companies based in the UPC member territories.
Catherine Drew, a patent specialist at Pinsent Masons, said: “The decision is interesting, both as a further application of the principles wherein the UPC considers it has international jurisdiction in relation to infringement of the national part of an EP outside of UPC territories – in this case Spain – but also because of the position taken with regards to an anchor defendant.”
“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.”
The UPC had previously ruled that its scope extended to European countries which weren’t members of the patent court - such as the UK - when the rights of companies in member states would be impacted.
This new ruling extends that reach further, to any company which has an authorised representative established in a member state of the court. The court, in its ruling, acknowledged the consequences of its decision, noting: “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 has to report to them. Furthermore, it is the manufacturers choice, whom and where to assign this role to.”
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