The long arm of the UPC

In this article, European Patent Litigator (representative before the UPC) Greg Ward explores a series of recent decisions covering the extent of UPC jurisdiction, and considers what these decisions mean for users of the court.

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Greg Ward | Connect on LinkedIn | gward@hlk-ip.com

The Unified Patent Court (UPC) is a supranational court, with jurisdiction over disputes in the 18 EU states that have ratified the Agreement on a Unified Patent Court. Several major European economies including the UK and Spain are not part of the UPC system. It would not be unreasonable to assume that the UPC does not have jurisdiction over these countries, however a series of decisions delivered in the first third of 2025 suggest that at least some of the UPC Local Divisions do not necessarily view a country’s lack of participation in the UPC system as a bar to the jurisdiction of the UPC, and the Court of Justice of the EU (CJEU) appears to agree.

Summary of decisions

The first decision issued was Fujifilm v Kodak; the decision was delivered by the Düsseldorf Local Division on 28 January. The decision concerned EP 3 594 009 (EP’009), which was directed to lithographic printing plates and was granted and in force in both Germany and the UK. Fujifilm brought an infringement action against a group of Kodak companies, all based in Germany, aiming to stop Kodak from making or marketing the allegedly infringing products within Germany and the UK. Kodak filed a counterclaim for revocation of EP’009. Kodak also argued that as Germany is a contracting state to the UPC but the UK is not, the UPC had no jurisdiction to determine infringement of the UK designation of EP’009.

A significant proportion of the decision focused on the technical revocation issues. The Düsseldorf Local Division found EP’009 to be invalid and, therefore, ordered it to be revoked in respect of Germany (but not the UK, where the Local Division found it had no jurisdiction to revoke the UK patent resulting from EP’009). Separately, the Düsseldorf Local Division considered whether it had jurisdiction to consider the issue of infringement in Germany and the UK. Based on the reasoning of the (revised) Brussels Regulation (No 1215/2012), the Local Division found that it did have jurisdiction. Applying the Brussels Regulation here provides that persons domiciled in a contracting state of the UPC shall, whatever their nationality, be sued in the courts of that jurisdiction. The UPC also went further, holding that

“If the defendant is domiciled in a Contracting Member State (here: Germany), the Unified Patent Court has jurisdiction to hear the infringement action in respect of the UK part of the patent in suit. This also applies if the defendant has filed a counterclaim for revocation in respect of the German part of the patent in suit. Even then, as regards the infringement action concerning the United Kingdom, the Unified Patent Court has jurisdiction to hear the case”.

Therefore, a patent holder may bring all their infringement claims before the UPC to obtain comprehensive relief from a single forum.

In a brief diversion from the UPC, a relevant CJEU decision was handed down on 25 February; BSH v Electrolux. The CJEU decision essentially affirmed the decision of the Düsseldorf Local Division. In summary, the CJEU found that a court of an EU member state in which a defendant is domiciled (where the UPC is considered equivalent to an EU member state court) has jurisdiction to hear infringement claims and grant cross-border remedies in respect of third countries (non-EU territories). However, while the EU member state courts/UPC can also make a determination as to validity in respect of third countries, this determination would “affect neither the existence nor content of the patent in that third country nor result in any amendment to the national register of the third country”; the determination applies only to the parties in the case, without altering the status of the patent in the third country national patent register.

Returning to the UPC, in Mul-T-Lock v IMC Creations the order of the Paris Local Division was delivered on 21 March. The order was consistent with the earlier decisions from the Düsseldorf Local Division and CJEU, both of which were referred to in the Mul-T-Lock v IMC Creations order. The order concerned EP 4 153 830 (EP’830) which was directed to a lock mechanism; EP’830 was in force in several jurisdictions outside the UPC, specifically Spain, the UK and Switzerland. The Paris Local Division found that it had jurisdiction consider infringement in respect of Spain and the UK; the reasoning here was consistent with that of the Düsseldorf Local Division, with the defendant in respect of these countries being Mul-T-Lock France, a French company. The Paris Local Division went further still than the Düsseldorf Local Division and found that they could also determine infringement in respect of the Swiss patent; the defendant in respect of Switzerland was Mul-T-Lock Suisse, a company based in Switzerland which is not an EU member state and which is not part of the UPC system. The justification for this extension of jurisdiction provided by the Paris Local Division was that the “anchor” defendant, Mul-T-Lock France, was domiciled in an EU member state, and that the patentee should be able to obtain a comprehensive decision before a single forum to avoid the risk of divergent decisions.

Finally, in the Dainese v Alpinestars order delivered on 8 April, the Milan Local Division found that it should be deemed to be a court of a Member State, and as such had “universal jurisdiction to adjudicate on infringement issues related to European patents over the defendants domiciled in Italy”, where this jurisdiction extended to “infringement issues related to European patents validated in non-UPC Countries, in this case in Spain”. The patents in question were EP 4 072 364 (EP’364) and EP 3 498 117 (EP’117), both of which concerned protective garments. The findings of the Milan Local Division were consistent with those of the Düsseldorf and Paris Local Divisions, as discussed above.  In summary, the Local Division stated that

“if it is a Court of domicile, the UPC – as well as a National Court – has competence to adjudicate on infringement issues related to European patents validated in non-UPC countries” and that “(t)he UPC (as well as the National Court) does not lose that jurisdiction merely because, as its defence, that defendant challenges the validity of that patent”.

Analysis of implications

As can be seen from the above decisions, there is a growing trend for UPC Local Divisions to interpret the limits of their jurisdiction quite broadly, typically with the justification that doing so can provide early certainty and avoid conflicting decisions.

For those seeking to enforce granted European Patents this broad jurisdiction makes the UPC an even more attractive court to use, with jurisdictional limits that extend beyond the current 18 ratified UPC states to encompass other (at least) other European countries. The UPC has arguably taken a further step towards becoming a one stop shop for patent infringement actions in Europe.

Conversely, for potential UPC defendants based in countries that have ratified the UPC, even operating in countries that have not ratified the UPC such as Switzerland and the UK may not be enough to avoid the long arm of the UPC. Accordingly, placing a stronger emphasis on freedom to operate searches and (if applicable) pre-emptive measures such as protective letters or invalidity actions may be prudent.

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This is for general information only and does not constitute legal advice. Should you require advice on this, or any other Unified Patent Court related topic, then please contact upc@hlk-ip.com or your usual HLK advisor.