Lawyers at A&O Shearman analyze developments regarding UPC’s long-arm jurisdiction, including its scope and jurisdictional limits
The Unified Patent Court (UPC) "long-arm” jurisdiction over European Patents (EPs) and defendants domiciled in a jurisdiction outside of the UPC has garnered significant attention.
Over the past 12 months, the UPC has held it has jurisdiction over the infringement of EP designations of non-UPC EU member states, EP designations of non-UPC, non-EU countries and infringement of non-UPC EPs by third parties domiciled outside the EU via an “anchor defendant”. The issue has now been raised in several cases before the UPC Court of Appeal, leading to the first UPC referral to the Court of Justice of the EU (CJEU) and the setting of a jurisdictional boundary regarding jurisdiction over non-UPC EP designations.
This article explores developments in the UPC’s long-arm jurisdiction, examining cases that have defined its scope, from the application of Electrolux to non-UPC EP designations and the use of anchor defendants, to the jurisdictional limits identified by the UPC Court of Appeal.
The basis for long-arm jurisdiction
The CJEU's Electrolux decision (BSH Hausgeräte v. Electrolux AB. (C-339/22)) confirmed that an EU member state court has jurisdiction under Article 4(1) Brussels I bis (1215/2012) (Brussels) over a defendant domiciled in that member state to hear infringement proceedings concerning patent designations of third countries, even where validity is challenged as a defence. As a common court under Article 71a(2) Brussels, the application of Electrolux means that, in respect of defendants domiciled in a UPC contracting state: (i) the UPC has jurisdiction over infringement actions in respect of non-UPC EP designations; and (ii) if the invalidity of the non-UPC EP patent is raised as a defence, the infringement proceedings can still continue and the invalidity defence considered by the UPC, albeit with any findings on validity having only inter-partes effect.
The first long-arm decision: Fujifilm v. Kodak
In Fujifilm Corporation v. Kodak (UPC_CFI_365/2023), Fujifilm brought proceedings against German-domiciled defendants for alleged infringement of an EP in Germany and the UK. Kodak raised the invalidity of the patent as a defence. The jurisdiction of the Mannheim Local Division to hear the claim insofar as it extended to infringement in the UK derived from Article 4(1) Brussels, due to the Kodak defendants’ domicile in Germany, and in applying Electrolux, the Mannheim court held that it was able to consider the validity of the UK EP designation inter partes.
The judgment illuminates potential quirks that may arise when the UPC considers infringement and validity of non-UPC EP designations. In relation to patent amendment, the Mannheim division held that Fujifilm’s patent amendment application was allowable, including in respect of the UK designation, but that there was no requirement for the UK designation to be formally amended, given UK procedural rules on amendment do not apply to UPC proceedings. As a result, the decision was based on an amended form of the non-UPC EP designation without requiring formal amendment of that designation.
The Mannheim division held that Fujifilm’s patent was valid and infringed by Kodak and issued an injunction covering both Germany and the UK. The decision was appealed by Kodak. The appeal hearing before the UPC Court of Appeal (CoA) took place at the end of March, with judgment now pending.
Anchor defendants
The extent to which an anchor defendant can provide a basis for the UPC to claim jurisdiction over the infringement of non-UPC EP designations by third parties domiciled outside both the EU and UPC has also been considered.
In Dyson v. Dreame (UPC_CFI_387/2025) involving, among other entities, a Hong Kong-domiciled manufacturer (Dreame) and a German-domiciled authorized representative (Eurep), under the General Product Safety Regulation (EU 2023/988), the Hamburg Local Division considered infringement of a Spanish EP designation in Spain (a non-UPC state) and subsequently granted a preliminary injunction.
The Hamburg division considered it had jurisdiction over the German authorized representative in respect of Spain via its domicile in Germany under Article 4(1). As for the Hong Kong manufacturer, jurisdiction was based on a broad reading of Article 8(1) of Brussels, on the basis that claims against the German authorized representative and the Hong Kong manufacturer were so closely connected that the authorized representation was deemed an anchor defendant. This was in conjunction with Article 71(b)(2), which provides in respect of a common court (such as the UPC) that Chapter II of Brussels applies as appropriate regardless of a defendant’s domicile.
The UPC CoA recently heard the appeal in this case (UPC_CoA789/2025 and UPC_CoA_813/2025) and has referred several questions to the CJEU.
In particular, the reference raised the question as to whether Article 8(1), which can apply where multiple defendants are alleged to have infringed the same patent, extends to claims against parties occupying different roles in the alleged infringement. In this case, Dreame as an infringer making offers for sale, and the German-domiciled defendant in its role as an authorized representative. If the answer is no, the UPC has asked whether it nevertheless has powers to grant provisional measures (pursuant to Article 71b(2) Brussels) even if the UPC does not have jurisdiction over the substance of the dispute.
The CJEU will also consider whether the acts of an authorized representative are sufficient for it to be considered as an intermediary whose services are being used by the alleged infringer such that it can be subject to a preliminary injunction. The CJEU’s decision will likely impact the approach to appointment of authorized representatives in UPC contracting states, not only for products under the General Product Safety Regulation (EU 2023/988), but in other contexts as well, such as in respect of medical devices, or marketing authorizations for pharmaceuticals.
Limits of jurisdiction
While able to extend beyond its borders, the UPC’s long-arm jurisdiction is not limitless. In Keeex SAS v. Adobe (UPC_CoA922-925/2025), the UPC CoA overturned an earlier decision of the Paris Local Division which had held that the UPC had jurisdiction to hear claims against defendants based outside of the UPC in respect of infringement of an EP within the UPC and outside, including the Swiss, Spanish, British, Irish, Norwegian, and Polish EP designations.
This was despite the fact that there was no anchor defendant domiciled within a UPC member state. The basis for jurisdiction was not the domicile of the defendant but the infringing acts taking place within the UPC (under Article 7(2) Brussels). As this was the only link between the UPC and the subject matter of the dispute, there was no basis for extending the UPC’s jurisdiction beyond its borders to cover infringement in territories that are not UPC contracting states.
In addition, the reach of the UPC’s long arm jurisdiction is limited to countries in which there are EP designations, as the scope of the UPC’s competence is limited to EPs. This stands in contrast to national EU courts which face no such corresponding limit on their competence.
This potentially broader jurisdictional scope of national courts was illustrated in Onesta v. BMW (case nos. 13056/25 and 13057/25), in which Onesta asserted two US patents (and an EP) against BMW in the Regional Court of Munich for infringement relating to supply of products to the US based on BMW’s domicile in Germany. Although in this case, BMW were able to obtain an anti-suit injunction in the US (US District Court for the Western District of Texas, Waco Division, case no 6:25-cv-00581) and the proceedings ultimately settled before any substantive decision, the case highlights the potential for the jurisdiction of national EU courts to reach further afield cross-border.
Conclusion
Several cases have now established that the UPC has jurisdiction to hear infringement claims extending to non-UPC EP designations. However, the precise scope of this long-arm jurisdiction is still being tested and established.
So far it is clear that the UPC will adjudicate infringement of non-UPC EP designations where defendants are domiciled in UPC contracting states. It will also consider such claims against non-EU domiciled parties through connections to anchor defendants domiciled within the UPC, though the pending CJEU referral in Dyson v. Dreame may clarify the boundaries of this approach. However, Keeex v. Adobe confirms that carrying out acts of infringement within the UPC is not alone sufficient basis for the UPC to then claim jurisdiction over infringement of EP designations outside of the UPC’s borders.
The availability of the UPC’s long-arm jurisdiction provides additional strategic options to patentees looking to enforce EPs against alleged infringer’s operating across Europe. In particular, and dependent on the factual circumstances, the potential to enforce across all EP countries in a single set of proceedings before the UPC. In parallel, Electrolux has also opened the possibility for cross-border proceedings in national EU courts, as seen in Germany not only in Onesta v. BMW but also in Regeneron v. Formycon (Munich Regional Court 7 O 16055/24) and Regeneron v. Advanz (Munich Regional Court 7 O 15539/25). As the UPC's jurisprudence develops and in anticipation of further guidance from the CJEU, practitioners and clients must navigate an increasingly complex jurisdictional landscape and strategic considerations.
