This is the first article in a three‑part series by Arnie Francis, explaining how long‑arm jurisdiction has emerged before the UPC, from its legal foundations in EU case law, through the UPC’s early decisions applying it in practice, to the strategic opportunities and risks it creates for patentees and defendants in cross‑border patent litigation. Click the link below to read more in the series:

• Article 2 – How the UPC is applying long arm jurisdiction in practice
• Article 3 – Strategic implications for patentees and defendants of the UPC’s long arm jurisdiction

Introduction

Long-arm jurisdiction is, at its essence, the ability of a court in one state to rule on matters of infringement of a patent granted in another state, and it has become one of the most significant legal developments in European patent litigation in recent times. Although patents are territorial rights, recent CJEU case law has reshaped how courts may adjudicate on infringement occurring in other states. The UPC, in particular, has embraced this development with enthusiasm, making it an important strategic consideration for users of the system to understand.

This first article sets out the legal framework underpinning long‑arm jurisdiction, explains the meaning of Article 24(4) of the Recast Brussels Regulation, and the shift from GAT v LuK to BSH v Electrolux. These principles help understand the genesis of long-arm jurisdiction, as well as how it is being interpreted and developed by the UPC in practice.

Substantive law – the legal framework

The jurisdiction of courts within the EU is primarily governed by Regulation (EU) 1215/2012 as amended by Regulation (EU) 524/2014 (the “Recast Brussels Regulation”). The relevant provisions regarding long‑arm jurisdiction are:

• Article 4(1): a defendant is to be sued in the court of the jurisdiction in which they are domiciled. In a patent dispute, this means suing the defendant in their home court for acts of infringement that may occur in other states.
• Article 7(2): provides the legal basis for bringing a patent infringement claim in the court of the jurisdiction in which an act of infringement occurred.
• Article 24(4): gives courts of EU Member States in which a European patent is granted exclusive jurisdiction over proceedings concerned with the registration or validity of that patent.
• Article 71a: effectively says the UPC is treated as if it were a court of an EU Member State.

The meaning of “proceedings concerned with the registration or validity of patents”

This phrase in Article 24(4) is central to understanding long‑arm jurisdiction. Consider a patent granted in Member States A and B, allegedly infringed in both, by a defendant domiciled in Member State A.

• The court of Member State A has jurisdiction over infringement in both Member States A and B (Art 4(1)).
• The court of Member State B has jurisdiction over infringement in Member State B only (Art 7(2)), but exclusive jurisdiction over validity in Member State B (Art 24(4)).

In the scenario that the defendant responds by challenging the validity of the patent, does the exclusive jurisdiction of the court in Member State B to adjudicate on “proceedings concerned with the validity of patents” in that state extend to the whole of the proceedings – the infringement claim and any counterclaim for invalidity – or is it limited to only the validity part of the claim?  In other words, does the court of Member State A lose its jurisdiction to hear the infringement dispute covering Member State B if a defence is raised that the patent is invalid in Member State B?

The old position under GAT v LuK

Following the CJEU’s 2006 decision in GAT v LuK[1], the phrase “proceedings concerned with the validity of the patent” was commonly interpreted to encompass both the infringement claim and any counterclaim for invalidity. As a result:

• The court of the Member State of grant had exclusive jurisdiction over the entire dispute concerning that Member State (i.e. the infringement and validity of the patent granted in that Member State).
• A court of a Member State lost jurisdiction over foreign infringement in another Member State if validity in that other Member State was challenged.

In the context of the above scenario, this would mean that the court of Member State A would rule on infringement covering Member State A and on the validity of the patent in Member State A; and the court of Member State B would rule on the infringement in Member State B and the validity of the patent in Member State B.  Member State A would lose its jurisdiction to rule on the infringement in Member State B if the validity of the patent in Member State B was challenged as a defence.

Because counterclaims for invalidity are raised in the majority of proceedings, this effectively prevented long‑arm infringement rulings.

The change brought about by BSH v Electrolux

In BSH v Electrolux[2], the CJEU adopted a narrower interpretation of Article 24(4). The Court held:

• A court of a Member State A hearing an infringement action based on the defendant’s domicile in Member State A retains jurisdiction over the infringement claim in other Member States, even if the validity of the patent in those Member States is challenged by way of defence.
• The court of Member State A cannot rule on the validity of the patent in those other Member States (those other Member States having exclusive jurisdiction over validity under Art 24(4)).
• When the court of Member State A has jurisdiction to adjudicate on infringement in a non-EU Member State under Art 4(1) by virtue of the defendant’s domicile, and the validity of the patent in the non-EU Member State is challenged by way of defence, the court of Member State A can rule on validity, though any such ruling would only apply insofar as it is part of the defence to the infringement action and would not affect the existence of the patent right in that non-EU Member State.  In essence, the validity ruling would have inter partes effect only.  The rationale for this was that Art 24(4) applies strictly to EU Member States and does not confer any jurisdiction (exclusive or otherwise) on courts of non-EU Member States regarding patent validity.

This decision is the legal foundation for long‑arm jurisdiction in cases where the validity of the patent is challenged by way of defence.

Application to the UPC

The jurisdiction conferred under BSH v Electrolux applies to courts of EU Member States.  By virtue of Article 71a of the Recast Brussels Regulation, it therefore also applies to the UPC in situations where the defendant is domiciled in a UPC Contracting Member State.

An example

Consider a European patent granted in:

• France, Germany, Italy, (UPC member states)
• Spain (a non-UPC but EU member state)
• and the UK (a non-UPC and non-EU member state).

A claimant brings infringement proceedings before the UPC against a defendant domiciled in Germany, alleging infringement in all five states.  The defendant counterclaims that the patent is invalid in all states.

As the defendant is domiciled in a UPC member state, the jurisdiction of the UPC to rule on validity and infringement is as follows:

Conclusion

BSH v Electrolux significantly broadened the applicability of long-arm jurisdiction by allowing courts — including the UPC — to hear cross-border infringement claims even when validity in other states is challenged.

In Part 2, we examine how the UPC has applied these principles in real cases and how far it is willing to extend its jurisdictional reach.

[1] Gesellschaft für Antriebstechnik mbH & Co. KG v Lamellen und Kupplungsbau Beteiligungs KG – Case C -4/03

[2] BSH Hausgeräte GmbH v Electrolux AB, Case C -339/22 (“BSH v Electrolux”)

Arnie Francis

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