The UPC’s Long Arm and the Limits of Its Reach

For the past year, European patent lawyers have been discussing the “long arm” of the Unified Patent Court (UPC) as if jurisdiction were simply a question of geographical reach. In cross-border litigation, expansion has become the dominant theme. Yet in law, extension alone proves little. What ultimately matters is not how far a court may assert jurisdiction, but what it may validly decide and how far its decisions will be effective.

The turning point in this debate was the Court of Justice’s judgment in BSH Hausgeräte GmbH v Electrolux AB (C-339/22).1 In that case, BSH sued Electrolux before the Swedish courts (the defendant’s domicile under Article 4(1) of Regulation 1215/2012) for infringement of several national parts of a European bundle patent. Electrolux raised invalidity as a defence, including for patents registered in other Member States. The Swedish court referred to the CJEU the question whether it retained jurisdiction over infringement when validity of foreign Member-State patents was contested. The CJEU’s answer has since shaped UPC practice.

What BSH Clarified and What It Preserved

Before BSH, cross-border patent litigation had already been narrowed from two sides: GAT v LuK made Article 24(4) bite even where invalidity was raised by way of defence, while Roche Nederland curtailed the multi-defendant route for centralising bundle-patent infringement actions.2BSH did not remove those constraints; it clarified that an invalidity defence does not, by itself, deprive the court seised under Article 4(1) of jurisdiction over the infringement claim.

The Court confirmed that Article 4(1) of Regulation 1215/2012 permits an infringement action to be brought before the courts of the Member State where the defendant is domiciled, even where the asserted national part of a European bundle patent is in force in another Member State.

However, Article 24(4) of the same Regulation preserves exclusive jurisdiction for proceedings concerned with the registration or validity of patents to the courts of the Member State where the patent is registered (or validated).

The consequences are:

• the court seized under Article 4(1) retains jurisdiction over infringement;
• it must decline jurisdiction over validity of patents registered in another Member State;
• it may stay infringement proceedings where there is a reasonable, non-negligible possibility that the patent will be declared invalid by the competent court.3

For patents registered outside the European Union, Article 24(4) does not apply. The court seized under Article 4(1) may examine invalidity only incidentally and only inter partes, without affecting the foreign register.4

Jurisdiction for infringement may follow domicile. Validity does not. Moreover, the applicable law remains determined by the lex loci protectionis under Article 8 of the Rome II Regulation.

How the Issue Reached the UPC

The UPC is a court common to several Member States. Under Article 31 UPCA, its international jurisdiction is established in accordance with Brussels I Recast or, where applicable, the Lugano Convention; under Articles 71a–71d of Regulation 1215/2012, it is treated as a court common to several Member States for the purposes of recognition and enforcement. Thus, after BSH, litigants invoked Article 4(1) before the UPC to argue that it could hear infringement claims relating to:

• Spanish designations (Spain is not participating in the UPCA);
• UK designations;
• Swiss designations;
• other non-UPC territories.

UPC divisions have largely accepted jurisdiction in principle, while maintaining limits at the level of proof and validity.

Jurisdiction Accepted, Relief Conditioned

In Fujifilm Corp. v Kodak GmbH, the Düsseldorf Local Division held that it had jurisdiction over infringement claims concerning the UK designation of a European bundle patent because the defendants were domiciled in Germany.5 The Court rejected discretionary declination arguments based on Owusu.6 After revoking the patent for UPC territory, it dismissed the UK infringement claim on the merits.7

In IMC Créations v Mul-T-Lock France, the Paris Local Division (order on preliminary objection) accepted jurisdiction over Spanish, Swiss and UK designations.8

Similarly, in Dainese v Alpinestars, the Milan Local Division accepted jurisdiction over the Spanish designation, without exercising validity jurisdiction reserved under Article 24(4).9

Subsequent amendment decisions confirmed that territorial scope may be expanded post-BSH, particularly where doing so avoids parallel proceedings and inconsistent outcomes .10

Yet the emerging principle is clear: the acceptance of international jurisdiction does not guarantee territorial relief. In Seoul Viosys, relief was confined to France due to insufficient proof of infringement in other territories.11 In Hurom, the Mannheim Local Division rejected the Turkey limb for insufficient territorial substantiation.12

The Validity Shadow

For patents registered in another Member State (e.g. Spain), Article 24(4) reserves jurisdiction over validity to the courts of that State.

For third-State patents (e.g. the United Kingdom), the UPC may consider invalidity only incidentally and only inter partes, without affecting the foreign patent register.

A patent left standing in UPC proceedings may therefore later be revoked by the competent foreign court. Conversely, an inter partes finding of invalidity does not extinguish the patent erga omnes.

Enforcement: Where Limits Become Concrete

Within the UPCA Contracting Member States, UPC decisions are enforceable under Article 82 UPCA; the concrete enforcement procedures are then governed by the law of the Contracting Member State where enforcement takes place. Brussels I Recast remains particularly relevant for the circulation of UPC judgments to non-UPCA EU Member States, as adapted by Articles 71a–71d.

In France, once a UPC decision is enforceable under the Regulation, enforcement measures (such as attachment, seizure or coercive penalties) are governed by the Code des procédures civiles d’exécution, in particular Articles L.111-3 and R.121-1. National law governs the methods of execution, not the recognition of the judgment itself.

In Germany, enforcement likewise proceeds without exequatur pursuant to Brussels I Recast. The ZPO governs the practical modalities of enforcement (for example, seizure and compulsory execution), whereas §§ 722–723 ZPO apply only in the absence of an applicable European regulation or treaty-based recognition regime.

This means that while the UPC may have jurisdiction to adjudicate infringement across several territories, the practical effectiveness of its decision ultimately depends on the enforcement framework of the State where execution is sought. Jurisdiction does not automatically translate into effective relief.

Outside the European Union, the difficulty becomes more pronounced. Enforcement is governed by the law of the State where recognition is sought. This may involve domestic rules on recognition of foreign judgments and, where applicable, international conventions such as the Lugano Convention.

For example, if the UPC renders a judgment concerning the UK designation of a European patent, enforcement in the United Kingdom will depend on common law recognition principles. A UK court will assess whether the UPC had jurisdiction according to UK private international law, whether the judgment is final and conclusive, and whether recognition would infringe public policy — including the UK’s exclusive jurisdiction over patent validity. Recognition is therefore not automatic. For patent judgments, this remains so notwithstanding the UK’s accession to the 2019 Hague Judgments Convention, since intellectual property matters fall outside that Convention’s scope. Similarly, in Spain—although an EU Member State—Article 24(4) reserves validity jurisdiction to Spanish courts. If a UPC judgment were seen as straying into that exclusively reserved sphere, a refusal argument under Article 45 of the Regulation would at least be arguable.

The “long arm” of the UPC therefore operates within a plural enforcement environment. The decision may travel; its effectiveness depends on reception. Jurisdiction may be centralized, but enforceability remains filtered through territorial legal orders. What BSH and subsequent UPC practice have achieved is not systemic integration, but procedural concentration. The unity of adjudication coexists with the plurality of validity regimes and enforcement controls. The decisive question is no longer whether the UPC may hear the case. It is whether its judgment can operate with the same authority beyond its immediate institutional perimeter. Within the Brussels I framework, circulation is facilitated but not unconditional, particularly where exclusive jurisdiction over validity is implicated. Outside it, recognition re-enters the domain of sovereign assessment.

Conclusion

Post-BSH, the UPC may in principle exercise jurisdiction over infringement claims relating to non-UPC designations against EU-domiciled defendants.

But three limits remain: validity remains territorially structured; relief depends on territory-specific proof; enforcement depends on the legal order of the enforcing State.

The arm has grown longer. The borders have not moved.

• 1Case C-339/22, BSH Hausgeräte GmbH v Electrolux AB, Judgment of 25 Feb. 2025, ECLI:EU:C:2025:108.
• 2GAT v. LuK, Case C-4/03, ECLI:EU:C:2006:457 (C.J.E.U. 2006) and Roche Nederland BV v. Primus, Case C-539/03, ECLI:EU:C:2006:458 (C.J.E.U. July 13, 2006).
• 3BSH, Case C-339/22, para. 51.
• 4Id., paras 63–65.
• 5UPC, LD Düsseldorf, Fujifilm Corp. v Kodak GmbH, UPC_CFI_355/2023 (28 Jan. 2025).
• 6Case C-281/02, Owusu v Jackson, EU:C:2005:120
• 7

  Fujifilm, supra note 5.

• 8UPC, LD Paris, IMC Créations v Mul-T-Lock France, UPC_CFI_702/2024 (21 Mar. 2025).
• 9UPC, LD Milan, Dainese S.p.A. v Alpinestars S.p.A., UPC_CFI_792/2024 (8 Apr. 2025).
• 10UPC, CoA, TGI Sport Suomi Oy v AIM Sport Development AG, UPC_CoA_169/2025 (11 Apr. 2025); UPC, LD Munich, Syngenta Participations AG v Sumi Agro Europe Ltd., UPC_CFI_566/2024 (14 Apr. 2025).
• 11UPC, LD Paris, Seoul Viosys Co. v Laser Components SAS, UPC_CFI_440/2023 (24 Apr. 2025).
• 12UPC, LD Mannheim, Hurom Co. v NUC Electronics Co., UPC_CFI_159/2024 & UPC_CFI_162/2024 (11 Mar. 2025).