Opinions
Long-arm jurisdiction of the Unified Patent Court: Local Divisions claim jurisdiction over infringement in non-UPC Countries.
The certainty of jurisdiction is a cornerstone of effective patent enforcement. A recent decision from the Milan Local Division of the Unified Patent Court (“UPC”) clarifies the scope of the Court’s jurisdiction, asserting its authority to hear infringement cases related to European Patents validated in countries outside the UPC agreement. This ruling establishes a “long-arm” jurisdiction, significantly expanding the UPC’s reach.
Relevant provisions
The Unified Patent Court anchors its territorial jurisdiction in a seamless integration of the Unified Patent Court Agreement (“UPCA”) and its Rules of Procedure (“RoP”), as well as Regulation (EU) No 1215/2012 as amended by Regulation (EU) 542/2014 (“Brussels I Recast”), and the jurisprudence of the Court of Justice of the European Union.
In particular, the UPC’s power to decide infringement actions springs first from Articles 32 and 33 UPCA, which grant exclusive jurisdiction over European Patents with unitary effect or not opted out and allocate that jurisdiction to the local division of the defendant’s domicile.
These UPCA provisions are integrated with EU private-international-law under Brussels I Recast.
On the one hand, under Article 71a Brussels I Recast the UPC is deemed to be a court of a Member State, thus ensuring that Brussels I Recast and every interpretative ruling of the CJEU on jurisdiction apply fully to the UPC. Furthermore, Article 71b Brussels I Recast, expressly includes disputes arising under European patents, even if they relate to non-Contracting States.
The Order by the Milan Local Division
In a recent case before the Milan Local Division, the Claimant sought a permanent injunction against patent infringement across UPC territories and Spain. The Defendant promptly raised four preliminary objections under Rule 19 RoP contesting, inter alia, the Court’s reach over the Spanish part of the patent in suit.
In the order on preliminary objections, Judge Zana began by reaffirming that Milan, as the court of the defendant’s domicile, indisputably has universal jurisdiction over infringements of European patents validated both within UPC Member States and in Spain, pursuant to Article 32 UPCA and 71a, and 71b Brussels I Recast.
In particular, the Court recalled the CJEU’s judgment of 25 February 2025 in Case C-339/22, in which the Court of Justice recognised long-arm jurisdiction to adjudicate on infringement issues related to European Patents before the national Court of an EU Member State if it is the defendant’s domicile.
In conclusion, the Court reiterated that the UPC, deemed to be a Court of a Member State under Brussels I Recast, in case it is the Court of the domicile of the defendant, has jurisdiction to adjudicate on infringement issues related to European patents validated in non-UPC Countries (so called long jurisdiction). Different interpretation would have the effect of recognising that the UPC has less territorial jurisdiction than a national court, contrary to the provisions of Brussels I Recast.
Affirming the UPC’s broad reach
It should be noted that this decision is by no means an outlier. In its landmark ruling of 28 January 2025 in Fujifilm v Kodak, the Düsseldorf Local Division similarly held that, where a defendant is domiciled in a UPC Contracting Member State, the Court may hear an infringement action covering even the United Kingdom portion of a European patent – despite the UK’s non-participation in the UPC after Brexit.
Together with parallel findings by the Paris Local Division in another case, these rulings confirm that the UPC consistently applies “long-arm” jurisdiction under the UPCA and Brussels I Recast. The UPC, treated as a national court, thus wields expansive territorial jurisdiction over infringement actions for European patents, regardless of where they are validated, so long as the defendant is domiciled in a UPC State.
This newsletter is for the sole purpose of providing updates and general information and is not intended as legal advice on any particular or specific issue.
For clarifications or information, please contact the authors or your reference professional in the Intellectual Property area at our Firm.
Niccolò Ferretti, Partner
E: n.ferretti@nmlex.it
T.: +39 026575181
Emanuela Gaia Zapparoli, Counsel
E: e.zapparoli@nmlex.it
T.: +39 026575181
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