This is the third 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 2 – How the UPC is applying long arm jurisdiction in practice
Introduction
In Part 2 of this series, we looked at how the UPC is exerting its long-arm jurisdiction in practice. The court’s arguably enthusiastic embrace of long-arm jurisdiction creates powerful opportunities for patentees and corresponding risks for defendants. Strategic considerations for both parties in light of the evolving case law are considered in this article.
How patentees can leverage the UPC’s reach
1. Use domicile‑based jurisdiction to secure multi‑state relief
When a defendant is domiciled in a UPC Member State, the UPC can hear infringement claims covering all designations of a European patent, including:
- UPC states (full jurisdiction over infringement and validity);
- non‑UPC EU states and non-EU but Lugano Convention states (infringement only);
- non‑EU and non-Lugano Convention states such as the UK (infringement and inter partes validity).
This allows patentees to obtain wide territorial injunctions in a single action, as seen in Fujifilm v Kodak, where the UPC granted an injunction extending to the UK.
2. Avoid fragmentation and inconsistent outcomes
Because the UPC retains jurisdiction over infringement even when validity is challenged elsewhere, patentees can prevent the splintering of disputes across multiple national courts.However, decisions of the court have shown that, depending on where cross-border relief is being sought, care needs to be taken when amending the patent during the course of proceedings. Amendments made before the UPC (e.g. in response to a counterclaim for invalidity) only take effect in the UPC states. If relief is being sought in a non-UPC but either EU state (such as Spain) or Lugano Convention state (such as Switzerland) the court has demonstrated that it will not rule on infringement in those states if there is a significant risk the patent there is invalid. And such a risk arises if the patent is amended in the course of the UPC proceedings, but those amendments are not also made to the patent in the non-UPC states.This was the situation in IMC Creations v Mul-T-Lock[1], where the court declined to assess infringement in Switzerland because amendments made to the unitary patent during the course of proceedings were not made to the Swiss patent. Care therefore needs to be taken to ensure that any amendments made to the patent within the UPC states during the course of proceedings are also made to the patent in the non-UPC states if long-arm relief in those states is being sought. The central limitation procedure before the EPO takes effect in all EPC states in which the patent is validated and so is a mechanism worth considering for this purpose.
However, the situation seems to be rather different if long-arm jurisdiction is being sought in a non-EU, non-Lugano Convention state (e.g. the UK). In this case, the UPC has shown willingness to rule on validity and infringement of the UK patent on the basis of an amended set of claims for the patent within the UPC member states, even if those amendments have not been made to the UK patent.
3. Exploit the UPC’s willingness to apply foreign substantive law
The UPC has shown it will apply national law (e.g., UK law in Fujifilm v Kodak) when assessing validity and infringement in non‑UPC states. This gives patentees a single forum capable of handling complex, multi‑jurisdictional disputes, but might require legal teams to work with local counsel to assess the applicability of the relevant substantive national law.
4. Use anchor defendants to reach third‑state actors (with caution)
Although the boundaries of the case are still unsettled, Dyson v Dreame shows the UPC may exert long-arm jurisdiction over non‑UPC domiciled defendants when an “anchor defendant” domiciled in the UPC is present. Patentees can use this strategically to pull global actors into the UPC’s long-arm reach to seek relief in non-UPC states in the same way they can against actors domiciled in a UPC state. However, the CJEU’s pending clarification will provide further guidance on how far this can go and in what circumstances.
How defendants can mitigate the risks
1. File national revocation actions early in non‑UPC states
In IMC Creations v Mul‑T‑Lock and Fujifilm v Kodak, the UPC signalled it may stay infringement proceedings for non‑UPC states if validity is being challenged nationally in those states. National nullity / revocation actions therefore look to be an effective tool for defendants to stave off the UPC’s long-arm reach.
2. Consider anti‑suit or anti‑enforcement injunctions
Especially in non‑EU jurisdictions like the UK, defendants may seek to restrain enforcement of UPC decisions exerting long-arm jurisdiction.
3. Challenge anchor‑defendant theories
When patentees attempt to use UPC‑domiciled entities to pull third‑state defendants not domiciled in a UPC state into the court’s long arm jurisdiction, the defendant should consider contesting the existence of a “close connection” between the claims against the defendants as required under Article 8 of the Brussels recast regulation. The pending referral to the CJEU of certain questions relating to anchor defendants will likely provide further guidance in due course, though the breadth and general applicability of that guidance beyond the particular facts of the case from which the referral was made is unknown at present.
4. Use procedural fragmentation to your advantage
Because the UPC cannot rule on the validity of patents in non‑UPC EU states (e.g., Spain), defendants can:
- force patentees into multiple validity battles,
- create procedural complexity that undermines the patentee’s push for efficient, cross-border relief.
Conclusion
The UPC’s long‑arm jurisdiction is a powerful enforcement mechanism for patentees and a significant exposure point for defendants. Patentees can consolidate multi‑state infringement actions and obtain broad relief extending even beyond the borders of the UPC states, while defendants must act early in non‑UPC states to limit the court’s reach through national revocation actions.
[1] 21 March 2025 UPC_CFI_702/2024
