Territoriality at a Crossroads: Is the UPC Redefining Territoriality in Patent Litigation?

As discussed in my previous post on this Blog, the UPC’s current approach of granting pan-UPC relief across all the Contracting Member States (CMS), based merely on a formal reliance on Article 34 UPCA, may be regarded as disproportionate and imbalanced. This concern becomes particularly significant if such pan-UPC relief becomes effectively automatic, without sufficient justification and without a proper assessment of its proportionality, in light of the actual or alleged conduct of each defendant and other territory-relevant aspects 1.

The two cases discussed below show an emerging issue concerning the broad territorial reach of UPC remedies and the manner in which claimants may use territorial facts strategically.

Claimants’ own limitation of the infringement action and relief sought in the non-carved-out CMS (the ‘carve-out paradox’)

In Quantificare v Canfield 2, the claimant brought an infringement action against Defendants 1) – 5) 3 in respect of BE, FR, IT, and NL, and carved-out DE from its action due to parallel national litigation in DE involving Defendants 1) and 2) and the same EP’843, thereby seeking to avoid lis pendens. In the national litigation in DE (at [3-5] of the decision), LG Düsseldorf had already ruled regarding alleged infringement of the DE part of EP’843 by Defendants 1) and 2) (case 4a O 78/20).  In parallel, in invalidity proceedings brought by Defendant 1), the DE part of EP’843 was initially held to be invalid by the BPatG (case 2 Ni 73/20 (EP)), although this decision was subsequently overturned on appeal by the BGH (case X ZR 88/22).

In the UPC action, the claimant substantiated infringement of EP’843 by Defendant 1) only in DE (i.e., only in respect of the territory that had been carved-out from the infringement action from the outset and in respect of which no relief was sought by the claimant). Nevertheless, the Düsseldorf LD accepted such evidence as sufficient and held (see headnote of the decision) that a finding of an act of infringement in one CMS is sufficient to issue an order also in respect of the other CMSs in which the EP is in-force, even where such act can only be established in the CMS in respect of which the patent proprietor, for procedural reasons, did not assert any claims in the infringement action. The Court merely reasoned (at [240] of the decision) that the claimant had excluded DE from the infringement action for procedural reasons, and that it could not be inferred from this exclusion that the acts of use in DE fell outside the scope of Article 34 UPCA, nor that there was any justification for restricting the territorial reach of the relief sought on that basis.

Therefore, despite the claimant’s own limitation of the infringement action, the claimant was nevertheless permitted to rely on the very same alleged acts of infringement with respect to Defendant 1) in that carved-out territory as the sole (or at least decisive) basis for a pan-UPC relief extending to all other CMS under Article 34 UPCA (the ‘carve-out paradox’). This approach is difficult to reconcile with the principles of procedural fairness and proportionality, and perhaps even risks enabling a form of abuse of process by neutralising the consequences of a claimant’s own limitation of the action 4.

Under Article 76 UPCA, the UPC must decide within the limits of the parties’ requests (ne ultra petita) and on the basis of the facts and evidence submitted in the proceedings. By virtue of the carve-out, the claimant did not seek any relief in DE, and indeed no relief in respect of DE was awarded.  However, such carve-out, together with the safeguards inherent in the notion of lis pendens, should also have substantive effects 5, potentially limiting the subject-matter of the proceedings, including the factual basis on which the claimant may rely. Once a UPC action is made possible precisely because the relevant territory was carved-out (and lis pendens thereby avoided), the Court should carefully consider whether the claimant's own procedural limitation of the action should also limit the extent to which those facts may be relied upon to justify relief elsewhere. This would be particularly concerning if, absent any other territorial substantiation by the claimant, those facts were treated as the sole or decisive basis for pan-UPC relief in the non-carved-out CMS. Disregarding such substantive effects of the claimant’s own limitation could create a risk that an entity allegedly infringing a certain national part of an EP within a single CMS (and perhaps already subject to a decision or pending proceedings in respect of that infringement before national court) is now also exposed to litigation before the UPC concerning the same allegedly infringing acts in that same CMS.

This could further create a strong strategic incentive for the claimants by increasing pressure on defendants (including in light of their liability for legal costs of the proceedings, as the losing party – Art. 69 UPCA), but may also encourage ‘division shopping’ at the UPC. In Quantificare v Canfield, the contested product was manufactured by Defendant 2) in the US, while it was distributed by Defendants 1), and 3)-5) in their respective territories (DE, NL, IT, and FR). The claimant brought the action before the Düsseldorf LD. However, only Defendant 1) was based in DE (Art. 33(1)(b) UPCA), and the claimant seemingly substantiated infringement in DE only in relation to Defendant 1) (Art. 33(1)(a) UPCA). Defendant 1) was therefore central to the claimant’s choice of division, enabling proceedings to be brought before one of the DE local divisions. Absent Defendant 1), there would have been no defendant based in DE and, at least on the basis of the published decision, no substantiated infringement in DE by any of the other defendants. The Court should ensure that a claimant’s procedural choices are not used to secure a preferred forum beyond what the territorial and factual circumstances of the dispute would justify.

Extra-territorial acts from outside of the CMS used as evidence of (threatened) infringement within the CMS

A related but distinct territorial question arises when acts occurring outside the CMS are relied upon as evidence of (threatened) infringement within the CMS. In Syngenta v Sumi Agro 6, in the context of preliminary injunction proceedings at the first instance, two grounds regarding alleged infringement of EP’073 were determinative with respect to the ‘2023 product’: (i) distribution of the contested product on the market outside the CMS (in particular in CZ, further evidenced with a sample), and (ii) advertising of the allegedly same product in several CMS. Leaving aside the parties’ dispute at first instance, as to whether the ‘2023 product’ marketed outside the CMS falls within the scope of the claims, and whether the second allegedly non-infringing ‘2024 product’ in fact existed (an issue that was subsequently addressed on appeal, where the ‘2024 product’ marketed in the CMS was also held to fall within the scope of the claims7), the Munich LD considered it sufficient in this case (as confirmed on appeal) that the distribution of the contested product outside the CMS and its advertising under the same name, based on the same marketing authorisation, within the CMS, constituted at least a risk of first infringement also in the CMS (see headnote 2 of that order). This ultimately resulted in pan-UPC-wide preliminary relief being granted by the Court.

The fact that the respondents pleaded that they would not produce, sell, or place the ‘2023 product’ on the market in the CMS was considered insufficient. The Court held that they should have offered a cease-and-desist declaration with a penalty clause in respect of the ‘2023 product’. On the other hand, the urgency clock was considered to start only once the applicant became aware of the respondents’ marketing activities in the CMS (around March 2024), while the respondents’ allegedly infringing activities outside the CMS were deemed irrelevant (notwithstanding that a sample of the contested product had already been obtained in June 2023).

Notably, this case concerned plant protection products, a highly regulated field; nevertheless, it illustrates that also acts occurring outside the CMS may be relied upon as evidence of (threatened) infringement within the CMS. Although such extra-territorial considerations may not be inherently illegitimate, it remains unclear when they become sufficient to establish a threat of infringement within the CMS, particularly in the context of potential pan-UPC relief. Is the mere fact that a product has been placed on the market, that would allegedly fall within the scope of the patent claims in the CMS, in itself relevant? What weight should be given to evidence from non-CMS territories where the patent is not in force? Is it the UPC’s finding of alleged infringement in CZ that was determinative in this respect? Or do differences in acts and/or claim scope alter the assessment? Proportionality may again become crucial in the assessment of a procedurally fair pan-UPC relief.

Interim conclusion

Article 34 UPCA should not become a mere formal shortcut, allowing claimants to obtain automatic pan-UPC relief without a careful assessment of the territorial and factual basis of the claim, the conduct of each defendant, and the proportionality of the requested measures. Indeed, for example the Paris LD in Seoul Viosys v Laser Components 8assessed the question of territoriality of the acts by the defendant in detail (at [103-107] of the decision) and held that, since the action was only aimed at a FR defendant and the acts of infringement were substantiated only for FR, the relief was therefore limited only to FR.

In view of the above discussed cases, it seems timely for the UPC to adopt appropriate safeguards, including a robust proportionality assessment of the acts alleged against each defendant in each territory and whether a pan-UPC wide relief against all the defendants is justified in the circumstances of each case. It should also include a substantive (and not merely procedural) limitation of the case in light of the claimant’s own limitation of the infringement action (thereby avoiding the ‘carve-out paradox’).

The effectiveness of the UPC will ultimately depend not only on the breadth of its remedies, but also on the safeguards ensuring that such remedies remain procedurally fair, proportionate, and properly substantiated. Territoriality should not be disregarded or diluted, as it remains an essential and fundamental aspect of patent rights. Whether these territorial aspects will in practice be adequately reflected in the proportionality assessment of pan-UPC relief remains an open, but a highly relevant question.

I would like to thank Matthieu Dhenne for his careful review and thoughtful comments on an earlier draft of this post, in particular on to the interplay between territoriality and proportionality, the role of Article 34 UPCA and the conceptual framing of the so-called 'carve-out paradox'. The views expressed herein remain solely my own.

• 1Proportionality and procedural fairness are reflected in Article 42 UPCA itself and constitute an implementation of Article 3 of the Enforcement Directive 2004/48/EC, as these principles are firmly embedded in EU law.
• 2Infringement action filed by Quantificare based on alleged infringement of EP 3 156 843 and the decision of the Düsseldorf LD from 23.04.2026 (UPC_CFI_559/2024 and UPC_CFI_106/2025)
• 3Defendants 1) to 4) belong to the Canfield Group, the parent company of Defendant 2). Defendant 1) is the German sales company of Defendant 2), while Defendants 3) to 5) are its other sales companies in the CMS. Defendants 1), 3) and 4) are wholly-owned subsidiaries of Defendant 2) (at [7] of the decision).
• 4Put differently, Defendant 1) is effectively being subjected twice to judicial remedies in respect of the same alleged conduct: Defendant 1) was first subjected to proceedings in DE concerning the alleged infringement of EP’843 in DE and was then exposed to pan-UPC relief based on that very same alleged infringement in DE. While not doctrinally applicable, by analogy, the criminal law principle of ne bis in idem captures a similar intuition: a party should not face repeated legal consequences for identical conduct.
• 5See the notion of lis pendens as described by the Max Planck Encyclopedia: Lis pendens (pendency, Litispendenz) concerns the effects of the initiation of civil proceedings in the law of civil procedure and in substantive law. Because proceedings are pending, certain effects occur. […] Lis pendens has procedural and substantive effects. (emphasis added)
• 6Application for provisional measures filed by Syngenta on 30 April 2024, based on alleged infringement of EP 2 152 073 and the order of Munich LD from 27.08.2024 (UPC_CFI_201/2024), and confirmed by order of the UPC Court of Appeal from 03.03.2025 (UPC_CoA_523/2024)
• 7Order of the UPC Court of Appeal in Syngenta v Sumi Agro (UPC_CoA_523/2024) from 03.03.2025
• 8Decision of the Paris LD in Seoul Viosys v Laser Components (UPC_CFI_440/2023) from 24.04.2025