The Long-Arm Jurisdiction of the Unified Patent Court

The Unified Patent Court (UPC) provides a centralised forum for resolving disputes related to European patents with unitary effect (unitary patents) and classical European patents that are not opted out of its jurisdiction.

One aspect of the UPC’s jurisdiction that has been the subject of much speculation is its “long-arm” reach, that is, whether it has power to decide on cases that extend beyond the borders of its 18 (at the time of writing) contracting member states into other European jurisdictions such as the UK and Spain.

Over the first few months of 2025, a number of decisions that begin to define the UPC’s long-arm jurisdiction have been issued by the UPC.

In this article, the authors provide an overview of the legal foundations of the UPC’s long-arm jurisdiction, before discussing the Court of Justice of the European Union (CJEU) decision in BSH Hausgeräte GmbH v Electrolux AB and its implications. The authors also review some pertinent UPC decisions and discuss practical considerations for litigants.

Legal basis and sources of law

The UPC was established by the Agreement on a Unified Patent Court (UPCA), which codifies its competence over unitary patents and classical European patents that are not opted out. The UPCA also lists the sources of law on which the UPC must base its decisions.

Foremost among these is European Union law (Article 24(1)(a) UPCA). Under the UPCA, the UPC “shall apply Union law in its entirety and shall respect its primacy” (Article 20 UPCA) and “The international jurisdiction of the Court shall be established in accordance with Regulation (EU) No 1215/2012 or, where applicable, on the basis of the Convention on jurisdiction and the recognition and enforcement of judgements in civil and commercial matters (Lugano Convention)” (Article 31 UPCA).

Regulation (EU) No 1215/2012, as amended to accommodate the UPC (“the Brussels I Recast Regulation”), is particularly pertinent to the UPC’s reach. Article 4(1) stipulates that “persons domiciled in a[n EU] Member State shall, whatever their nationality, be sued in the courts of that Member State”, while Article 24(4) reserves jurisdiction over issues concerning the validity of patents to the court of the EU member state in which the patent was registered. For classical European patents (which are validated as national patents in the European Patent Convention (EPC) member states in which protection is desired once granted), the court of each EU member state in which the patent has been validated has exclusive jurisdiction in proceedings concerning the validity of the national validation in that member state. A similar provision exists in the Lugano Convention, whose signatories include all current EU member states and other states such as Switzerland, Norway and Iceland, but not the UK.

Perhaps most importantly, Article 71a of the Brussels I Recast Regulation establishes the UPC as a common court having equivalent jurisdiction to a national court of an EU member state when it exercises jurisdiction in matters falling within the scope of that Regulation. Further, Article 71b could be interpreted as extending the jurisdiction of the UPC to defendants who are not domiciled in an EU member state, and to damage arising outside the EU from an infringement of a European patent that gives rise to damage within the EU.

The CJEU decision in BSH Hausgeräte GmbH v Electrolux AB

As the UPC must apply EU law in its entirety, decisions of the CJEU should be followed by the UPC. The CJEU’s 25 February 2025 decision in BSH Hausgeräte GmbH v Electrolux AB (C 339/22) is of particular relevance to the UPC’s long-arm jurisdiction.

This decision addresses questions regarding jurisdiction in cross-border patent infringement disputes.

The German company BSH sued the Swedish company Electrolux, in Sweden, for alleged infringement of all the national parts of European patent EP1434512, which had been validated as national patents in several EU countries (Germany, Greece, Spain, France, Italy, the Netherlands, Austria, Sweden), the UK and Türkiye.

Electrolux contested the validity of the patent, and invoked Article 24(4) of the Brussels I Recast Regulation to challenge the Swedish court’s jurisdiction over the claims relating to infringement outside of Sweden. Electrolux argued that, because of its invalidity contentions, the infringement action must be regarded as a dispute concerned with the validity of patents. As such, under Article 24(4), the national courts of the states in which the European patent had been validated had exclusive jurisdiction for the infringement claims, meaning that the Swedish court could not rule on the infringement of the non-Swedish national patents. BSH would therefore have to bring separate infringement actions before the national courts of the countries in which the European patent had been validated.

The Swedish court found in Electrolux’s favour at first instance, which led to an appeal by BSH to the Swedish Court of Appeal, in which BSH argued that Article 24(4) is not applicable to “pure” patent infringement actions. BSH therefore argued that a court that has jurisdiction under Article 4(1) on the basis of the defendant’s domicile may hear an action alleging infringement of a foreign patent even if it does not have jurisdiction to decide on the validity of such a patent. BSH additionally argued that Article 4(1) grants the Swedish court jurisdiction over an action alleging infringement of a foreign patent that had not been granted or validated in an EU member state, in this case the Turkish national patent.

Following a referral from the Swedish Court of Appeal, the CJEU decided as follows:

“A court of the Member State of domicile of the defendant which is seised, pursuant to Article 4(1) of [the Brussels I Recast Regulation], of an action alleging infringement of a patent granted in another Member State, does still have jurisdiction to hear that action where, in the context of that action, that defendant challenges, as its defence, the validity of that patent, whereas the courts of that other Member State have exclusive jurisdiction to rule on that validity”.

In the decision, the CJEU affirmed the earlier (February 2024) opinion of the Advocate General of the CJEU that this interpretation of Article 24(4) allows the proprietor of a European patent to concentrate claims relating to infringement of the patent in several EU member states, and to obtain compensation in a single forum, avoiding the risk of divergent decisions.

The CJEU further ruled that:

“Under the general rule laid down in Article 4(1) of the Brussels I bis Regulation, the courts of the Member State in which the defendant is domiciled have, in principle, jurisdiction in an infringement action brought against that defendant by the holder of a patent granted or validated in a third State which is domiciled in another Member State. In addition, the jurisdiction of the court of the Member State thus seised does, in principle, by virtue of that general rule, extend to the question of the validity of that patent raised as a defence in the context of that infringement action”.

“If a court of a Member State is seised, on the basis of Article 4(1) of that regulation, of an action alleging infringement of a patent granted or validated in a third State in which the question of the validity of that patent is raised, as a defence, that court has jurisdiction, pursuant to Article 4(1), to rule on that defence, its decision in that regard not being such as to affect the existence or content of that patent in that third State or to cause the national register of that State to be amended”.

The effect of these findings is that, in cases where the defendant is domiciled in an EU member state, a court of that EU member state has jurisdiction to decide not just on infringement of a patent granted or validated in a non-EU state, but also on the validity of that patent, where invalidity of the patent is raised as a defence. However, the EU court’s finding on validity cannot affect the existence or content of the patent (eg, through amendments to, or revocation of, the patent) or the national register of the state in which the patent was granted or validated. That is, the EU court’s findings on validity apply only to the parties in the case brought before it.

As Article 71a establishes the UPC as a common court having equivalent jurisdiction to a national court of an EU member state, the CJEU’s decision has significant implications for the jurisdiction of the UPC.

In particular, the CJEU decision supports the long-arm jurisdiction of the UPC, as it suggests that the UPC has jurisdiction over issues of infringement of national parts of European patents in states that do not participate in the UPC system, if the defendant is domiciled in a UPC participating state. The UPC also has jurisdiction over issues of infringement and validity (if raised as a defence) of national parts of European patents in states outside the EU. However, the UPC’s decision on the validity of the patent in such a non-participating state would not have any effect on the patent or the national register in that non-participating state.

Relevant decisions and orders of the UPC

The UPC has begun to assert its long-arm jurisdiction in practice, as evidenced by several notable decisions and orders issued by the UPC in the first half of 2025.

Fujifilm v Kodak

This decision (UPC_CFI_355/2023) was issued by the Düsseldorf Local Division on 28 January 2025 (before the decision of the CJEU in BSH Hausgeräte GmbH v Electrolux AB).

In this case, Fujifilm sued a group of German-based Kodak companies for infringement of European patent No EP3594009, relating to lithographic printing plates, which was validated after grant in Germany and the UK.

Kodak counterclaimed for revocation of the patent, and argued that the UPC did not have jurisdiction to rule on infringement of the UK national validation of the patent, as the UK is not a contracting state to the UPCA.

The Düsseldorf Local Division disagreed with Kodak, ruling that it did have jurisdiction to decide on infringement of the UK part of the patent, citing Article 4(1) of the Brussels I Recast Regulation.

As all the defendants were domiciled in Germany (an EU member state), pursuant to Article 4(1) they could be sued in the courts of that member state. The UPC is deemed to be a common court with equivalent jurisdiction to that of an EU member state under Article 71a of the Brussels I Recast Regulation, meaning that the defendants could all be sued in the UPC.

The Division further noted the February 2024 opinion of the Advocate General in BSH Hausgeräte GmbH v Electrolux AB that the jurisdiction of the courts of an EU member state in which the defendant is domiciled under Article 4(1) is universal and thus may extend to the infringement of a European patent in all the states for which it has been granted, enabling the patent holder to obtain comprehensive relief from a single forum.

Thus, the Division held 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”.

The Division acknowledged, however, that the UPC had no jurisdiction to decide on the validity of the UK part of the patent, as jurisdiction for questions of validity is reserved for the court of the state in which a patent is granted or validated. As noted above, this decision pre-dates the CJEU BSH Hausgeräte GmbH v Electrolux AB decision, which would explain why the Division took a different approach to the question of validity to the Mul-T-Lock decision discussed directly below, which post-dates the CJEU decision.

Mul-T-Lock v IMC Creations

In this order (UPC_CFI_702/2024), delivered on 21 March 2025, the UPC’s Paris Local Division held that the UPC has jurisdiction to decide not only on infringement of UK and Spanish national validations of a European patent by a French company, but also on infringement of a Swiss national validation of the patent by a Swiss company.

IMC Creations sued the French company Mul-T-Lock France and the Swiss company Mul-T-Lock Switzerland for infringement of European patent No EP4153830, relating to a lock, which was validated as a unitary patent and as national patents in the UK, Spain and Switzerland.

The Mul-T-Lock companies filed a preliminary objection contesting the UPC’s jurisdiction over the claims of infringement of the national validations in the UK, Spain and Switzerland. In its submissions, Mul-T-Lock acknowledged the CJEU’s decision in BSH Hausgeräte GmbH v Electrolux AB and the Düsseldorf Local Division’s decision in Fujifilm v Kodak, but requested that the UPC decline its jurisdiction to rule on infringement of the national validations of the patent in the states that are not party to the UPCA agreement, namely the UK, Spain and Switzerland.

The Paris Local Division rejected Mul-T-Lock’s arguments, finding that it had jurisdiction over the infringement action due to the domicile in France of one of the defendants. Citing the CJEU judgment, the Division stated that in the event of infringement disputes in several member states of the EU, a patentee must be able to concentrate all its infringement claims and obtain comprehensive compensation before a single forum, and avoid the risk of divergent decisions.

The Division also applied the reasoning of the CJEU to find that the UPC did have jurisdiction to hear the infringement claims relating to the Spanish and Swiss parts of the patent (by virtue of Spain’s status as an EU member state and therefore a party to the Brussels I Recast Regulation, and Switzerland’s status as a contracting state to the Lugano Convention).

Again applying the CJEU’s reasoning, the Division found that as the UK is a third country that is not party to either the Brussels I Recast Regulation or the Lugano Convention, the UPC had jurisdiction to adjudicate on both infringement and validity of the UK part of the patent, provided that any finding of invalidity would only have inter partes effect and therefore would not affect the existence or scope of the UK part of the patent.

Alpinestars v Dainese

This is an order delivered by the Milan Local Division on 8 April 2025 (ORD_64124/2024, UPC_CFI_792/2024). In this case, the Italian company Dainese sued its Italian rival Alpinestars for infringement of European patent EP4072364, relating to a wearable protective device, in the contracting member states of the UPCA and in Spain.

Alpinestars filed a preliminary objection, arguing that the UPC did not have jurisdiction to rule on the alleged infringement of the Spanish validation of the patent.

The Milan Local Division applied the reasoning of the CJEU decision to find that in a case where a defendant is domiciled in a UPC contracting state (here, Italy), the relevant UPC division has universal jurisdiction to adjudicate on infringement issues relating to European patents validated in non-UPC countries: “The UPC, deemed to be a court of a Member State, in case it is the Court of the domicile of the defendant, has jurisdiction to adjudicate on infringement issues related to patents validated in non-UPC countries”.

TGI Sport v AIM Sport

In an order dated 11 April 2025 (UPC_CoA_169/2025), the UPC Court of Appeal upheld the Helsinki Local Division’s earlier decision allowing AIM Sport to amend its infringement claim to cover infringement of the Spanish validation of European patent No EP3295663. The Court of Appeal agreed that refusing to extend the claim to Spain could lead to irreconcilable and inconsistent decisions, if AIM Sport were to initiate separate proceedings in respect of the Spanish validation.

Syngenta v Sumi

In this order dated 14 April 2025 (UPC_CFI_566/2024/UPC_CFI_39/2025), the Munich Local Division allowed Syngenta to amend its infringement action to cover infringement of Polish, Czech and UK validations of European patent No EP2152073. The application to amend came late in the proceedings, but the Division accepted Syngenta’s argument that it could not have been made earlier because, prior to the CJEU decision, it was generally considered that the UPC was not competent to hear cases concerning infringement of national validations of a European patent in non-UPC countries.

Seoul Viosys v Laser Components

This is a decision by the Paris Local Division, handed down on 24 April 2025 (UPC_CFI_440/2023).

Seoul Viosys sued Laser Components, a French company, for infringement of European patent EP3404726, relating to an ultraviolet LED, which was validated as a national patent in France, Germany, the Netherlands and the UK. Seoul Viosys initially requested, among other remedies, an injunction restraining Laser Components from manufacturing or dealing commercially in products falling within the scope of its patent in France, Germany and the Netherlands.

The Paris Local Division found that Laser Components had infringed the patent in France by importing, offering, placing on the market and keeping infringing articles.

Later in the proceedings, Seoul Viosys asserted that Laser Components had not contested the remedies requested, and therefore it would be entitled to request measures not only in France but also in the other states in which the patent had been validated, namely Germany, the Netherlands and the UK.

The Division rejected this argument, noting that Seoul Viosys had only provided evidence of infringing activity in France, in the form of a purchase from a Laser Components website delivered to an address in France. No specific evidence of sales of infringing products in Germany, the Netherlands or the UK by Laser Components was provided by Seoul Viosys, and the website cited in its evidence clearly showed a segmentation of sales according to distributers within the Laser Components Group.

As regards the allegations of infringement in the UK, the Division referred to the CJEU decision, and stated that a claim relating to acts of infringement committed in a state outside the EU in which the patent in question is in force may be recognised as admissible before the UPC, effectively confirming the UPC’s long-arm jurisdiction. However, the Division noted that it is still necessary to have specific evidence on the existence of such acts of infringement, which was not the case here.

Practical implications for litigants

It is clear from the cases discussed above that the UPC views its jurisdiction as extending beyond the borders of the contracting member states to the UPCA, and is willing to exercise that jurisdiction to rule on the infringement and validity of national validations of European patents in states outside the UPC contracting member states if the defendant (or a defendant, in cases with multiple defendants) is domiciled in a UPC contracting member state.

However, as is clear from Seoul Viosys v Laser Components, the UPC will only exercise this long-arm jurisdiction when it is justified by the available evidence.

Given the primacy of EU law in the UPC and the CJEU’s decision in BSH Hausgeräte GmbH v Electrolux AB, it seems that the long-arm jurisdiction of the UPC is here to stay, and may even be extended to defendants who are not domiciled in an EU member state in some cases.

This makes the UPC even more attractive to holders of European patents, by creating a true “one-stop shop” for enforcement of European patents.

In contrast, companies based in UPC contracting states with operations in non-UPC states in which a European patent could be validated should be aware that their operations in such states will not necessarily escape the UPC’s reach, and should take appropriate steps to ensure their freedom to operate in all the territories of commercial interest to them.

Such steps might include freedom to operate searching, to check for relevant patent rights prior to the launch of a product in an EPC member state. If necessary, pre-emptive measures could be taken to invalidate any such patent rights by opposing the patent at the European Patent Office, bringing a revocation action at the UPC or at a relevant national court or both. Alternatively, a declaration of non-infringement could be sought, again from the UPC or a relevant national court.

Pre-emptive proceedings in a national court in relation to a European patent that has been opted out of the UPC’s jurisdiction may be an effective way to escape the UPC’s long-arm jurisdiction, as once such proceedings have been brought, the opt out cannot be withdrawn, meaning that the patent is locked out of the UPC and any future infringement proceedings must be brought before the relevant national courts.