Strong arming jurisdiction: UPC asserts jurisdiction over non-UPC countries

With the commencement of the Unified Patent Court (UPC), a more centralised approach has been introduced for participating member states, providing a single court system to address infringement and validity issues across these jurisdictions that have opted into the UPC agreement. As a result, the UPC generally facilitates cross-border litigation, allowing the court to handle claims related to different national parts of the same patent granted by the European Patent Office (EPO).

National courts continue to handle certain aspects that fall outside the UPC’s scope, such as litigation of national patents, nationally validated European patents that have opted out of the UPC, and claims that are not within the UPC’s jurisdiction, such as national revocation or infringement actions in non-UPC member states or non-EU member states. This distinction underscores the fine line between litigation before national courts and the UPC.

As of 28 January 2025, the Court of First Instance (CFI), Düsseldorf Local Division (LD) – one of the multitude of divisions of the UPC across the EU, issued a decision (UPC_CFI_355/2023) further defining the UPC’s role in cross-border infringement and invalidation actions, particularly for cases involving non-UPC states, and even non-EU states, such as the UK. In its decision, the Court asserts its jurisdiction to consider a parallel UK infringement action concerning the same European patent. The Court ruled that, as the defendant was domiciled in a UPC member state, i.e. Germany, the UPC has jurisdiction to hear the case concerning the infringement action related to the UK part of the patent in question. This applies even if the defendant has filed a counterclaim for revocation concerning only the German part of the patent.

The Court went so far as to consider both patent infringement and revocation in the UK, even though the UK part of the patent in suit was not included in the counterclaim for revocation. While no revocation action had been filed in the UK, the Court concluded (in Section D of its decision) that the grounds for invalidity would also apply to the UK part of the patent in suit “irrespective of any differences between the Contracting Member States and the UK”, and “even if the Court cannot decide on the validity of the UK part of the patent in suit…the infringement action [in the UK] cannot be successful in such a factual and legal situation”.

While the UK is not part of the UPC, this approach offers significant advantages for claimants who would otherwise need to pursue parallel infringement or revocation actions in non-UPC member states. However, at the same time, this decision further blurs the line between non-UPC and UPC member states regarding the UPC’s jurisdiction and re-opens considerations on the scope of long-arm jurisdiction of the UPC raised as the UPC was being set up. The Court’s decision sets an important precedent in patent law under the UPC and member states of the EPO, suggesting that parallel court proceedings in non-UPC member states, such as the UK, Switzerland, Spain, Poland, Croatia, or Turkey, are increasingly intertwined with UPC jurisdiction. As demonstrated by this decision, the distinction is becoming less clear in certain cases, particularly with parallel litigation across jurisdictions and counterclaims for revocation.

Judges in national courts in non-UPC countries, especially non-EU countries, are unlikely to welcome an encroachment on their jurisdiction from a court with a much larger remit. It remains to be seen whether national courts or governments will counter in some way or whether the present decision on jurisdiction will be upheld. This will be an important area to watch, however, and, clearly, one that will evolve as more cases and UPC divisions consider this issue.

If you would like advice about any aspect of UPC law and practice, please contact your usual GJE attorney or email us at gje@gje.com.