How the UPC is applying long arm jurisdiction in practice

This is the second 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 1 – Long arm jurisdiction before the UPC: law, practice, and strategy
Article 3 – Strategic implications for patentees and defendants of the UPC’s long arm jurisdiction

Introduction

With the legal foundations established in Part 1, the next question is how the UPC is applying long‑arm jurisdiction in practice. Early UPC decisions show a court that is willing to embrace its jurisdictional reach and, arguably, stretch the limits of the framework established by BSH v Electrolux. But recent decisions show the UPC’s reach depends heavily on where the defendant is domiciled, and the picture is very different for defendants inside versus outside the UPC territory, with the latter currently in somewhat of a state of flux but with indications being this is where the limits of the court’s long-arm jurisdiction will be reached.

This article examines the UPC’s emerging jurisprudence, including IMC Creations v Mul‑T‑Lock, Fujifilm v Kodak, Dyson v Dreame, and Adobe v Keex SAS.

Defendants Domiciled in UPC Member States

IMC Creations v Mul‑T‑Lock

In IMC Creations v Mul-T-Lock[1] , IMC brought an infringement claim against the Swiss and German entities of Mult-T-Lock over a patent validated in Switzerland, Spain and the UK (amongst other states). Mult-T-Lock challenged the jurisdiction of the UPC, but did not challenge the validity of the patent either as a defence to the infringement claim nor as part of separate revocation proceedings.

The UPC held:

It had jurisdiction to rule on infringement in all designated states of the patent, including Switzerland (a non-EU Member State but party to the Lugano Convention), Spain (an EU Member State but not a UPC Contracting Member State) and the UK (neither an EU Member State, UPC Contracting Member State nor bound by the Lugano Convention).
Infringement proceedings for Switzerland and Spain may need to be stayed if there was a serios risk that the patent would be invalidated by the court of those states. In this particular case, the patent was amended during the course of proceedings in response to the defendant’s counterclaim for invalidity. However, these amendments were made to the unitary patent only (covering all the UPC Contracting Member States), and not to the Swiss designation. No separate amendment procedure was initiated before the Swiss patent office. Consequently, the court declined to assess infringement in Switzerland because of the significant risk of invalidity of the Swiss designation of the patent.
It had jurisdiction to rule on the validity of the UK designation (with the finding having inter partes effect only).

This case shows the UPC’s willingness to assert jurisdiction to decide on infringement in non-UPC and non-EU states, though for such states that are either in the EU (Spain) or bound by the Lugano Convention (Switzerland) the court will not do so if there is a significant risk of invalidity of the patent in those states.

Fujifilm v Kodak

The background to the case is that Fujifilm sued several Kodak entities, alleging infringement of a European patent that was validated in Germany and the UK. The defendants were all domiciled in Germany. In its first decision dated 2 April 2025, the court decided that the German designation of the European patent was valid and infringed (the court decided to issue its decision on the German patent first and withhold its decision on the UK patent until the CJEU gave its decision in BSH v Electrolux). Importantly, this decision was rendered on the basis of claim amendments to the German patent made by Fujifilm in the course of proceedings. No corresponding amendments were made to the UK patent. The court then delivered its decision on the UK designation on 18 July 2025[2].

The key points of the decision on the UK patent were:

The defendants were domiciled in Germany and therefore the UPC had jurisdiction to decide on infringement of the UK patent under Art 4(1) of the Recast Brussels Regulation. In accordance with the decision in BSH v Electrolux, the UPC retained this jurisdiction even when the validity of the UK patent was challenged by way of defence.
The defendant was permitted to raise the invalidity defence before the UPC without being obliged to file a national revocation action against the UK patent. However, whether the defendant does or does not file such a revocation application will impact whether the UPC will stay its infringement ruling for the UK.
The UPC assessed UK validity as a prerequisite to finding infringement, though a finding of invalidity has inter-partes effect only and would not cause the UK patent to be revoked.
The court assessed infringement and validity of the UK patent as Fujifilm proposed to amend it, even though Fujifilm had not actually made those amendments to the UK patent. This contrasts directly with the position the UPC took with respect to the Swiss patent in IMC Creations v Mul-T-Lock discussed above, most likely because the UK, unlike Switzerland, is not part of the Lugano Convention.

Defendants Domiciled in Non‑UPC Member States

The UPC’s ability to exert long-arm jurisdiction over defendants not domiciled in a UPC member state is somewhat uncertain at present, but is more limited compared to when the defendant is domiciled in a UPC member state.

Dyson v Dreame

The decision of the Hamburg Local Division in Dyson v Dreame[3] considered the role of ‘anchor defendants’ (domiciled in a UPC Contracting Member State) in the applicability of the UPC’s long-arm jurisdiction to defendants not domiciled or having their principal place of business in a UPC Contracting Member State (“third state defendants”). Dyson applied for a preliminary injunction before the UPC alleging infringement of its European patent in all UPC states and Spain. The defendants included Dreame International (based in Hong Kong), Eurep GmbH (Dreame’s Authorised Representative under EU product safety regulations), and Dreame’s Swedish and German distributors.

The local division:

Granted a preliminary injunction against all the defendants for the UPC states
Extended the injunction to Spain with respect to Dreame International and Eurep based on Eurep acting as an “anchor defendant” domiciled in a UPC state for Dreame International (who were not domiciled in a UPC state).

Thus, at first instance, the local division held that a defendant domiciled in a UPC contracting member state can, in certain circumstances, act as an anchor defendant to a party not domiciled in a UPC contracting member state, permitting the UPC to exert long-arm jurisdiction over defendants not domiciled in a UPC contracting member state. Such a finding was a notable extension of the situation considered by the CJEU in BSH v Electrolux, and on appeal the Court of Appeal left open whether the injunction against Dreame could apply to Spain, and has referred several questions to the CJEU.

The extent and circumstances in which long-arm jurisdiction is applicable to third state defendants is therefore awaiting clarification from the EU’s top court.

Adobe v KeeeX SAS

In this case, KeeeX brought an infringement action against eight defendants, none of which were domiciled in a UPC contracting member state. Relief was sought in UPC contracting member states as well as Switzerland, Spain, the UK, Ireland, Norway an Poland. On appeal, the CoA found:

When the UPC’s jurisdiction is based solely on Article 7(2) of the Recast Brussels Regulation (place where the infringement occurred), the UPC’s jurisdiction is limited to claims concerning damage within the UPC’s territory.
Article 7(2) cannot support long‑arm jurisdiction to non‑UPC states.

Conclusion

The UPC has shown a clear willingness to exercise long‑arm jurisdiction when the defendant is domiciled in a UPC Member State, even extending injunctions to non‑EU and non-Lugano Convention states such as the UK. For defendants outside the UPC’s territory, the situation is more uncertain, with key questions concerning ‘anchor defendants’ and their ability to extend long-arm jurisdiction now before the CJEU.

In Part 3, we turn to the strategic implications: how patentees can leverage the UPC’s reach, and how defendants can mitigate the risks.