Before the UPC, it is possible to obtain an injunction for up to 39 EPC countries within centralized infringement proceedings against a defendant domiciled in the UPC Land. However, no injunction for third countries like the USA can be granted by the UPC as it is only competent for European patents.
3.1 Injunction for up to 39 EPC countries (if defendant is domiciled in UPC Land)
The UPC has jurisdiction to hear patent infringement actions not only based on the Unitary Patent or the European bundle patent for the UPC Member States but also with respect to other European Patent Convention (EPC) countries where the European patent is in force even if an invalidity defense is raised. However, the UPC’s international competence for the patent infringement actions for other EPC countries (non-UPC Member States) is only given if the defendant is domiciled in the UPC Land, i.e. in one of the 18 UPC Member States (Art. 4 (1), Art. 71b no. 1 Brussels Ibis Regulation). An infringement action including injunction and damages for the UPC Land and other EPC countries in which the European patent is validated must be brought before the local division of the UPC Member State where the defendant has its residence, Art. 33 (1) b) UPCA. With regard to defendants domiciled in Germany, all German Local Divisions are competent.
The judgment of the Court of Justice of the European Union (CJEU) of February 25, 2025 – C-339/22 (BSH./.Electrolux) confirms the long-arm jurisdiction of the UPC (that is deemed to be a court of an EU Member State according to Art. 71a (1) Brussels Ibis Regulation) for patent infringement actions with respect to other EPC countries. The judgment of the CJEU brings long-awaited clarity with regard to the long-arm jurisdiction and strengthens cross-border patent litigation options.
Concerning the question of validity, it must be differentiated between (i) EU Member States which are non-UPC Member States and (ii) EPC countries which are non-EU Member States.
(i) EU Member States which are non-UPC Member States
Even if the UPC is competent for infringement actions regarding acts of infringement in the EU Member States which are non-UPC Member States, the national courts of the EU Member States which are non-UPC Member States and where the patent is validated, shall have the exclusive competence for the question of validity of those parts of the European patent (Art. 24 no. 4 Brussels Ibis Regulation). According to the CJEU, the infringement action may be stayed in view of an invalidity defense to consider a decision on the validity of national courts of other EU Member States which are non-UPC Member States.
(ii) EPC countries which are non-EU Member States
According to the CJEU’s judgment, a court of the EU Member State where the defendant is domiciled is also competent for an infringement action concerning the acts of infringement in EPC countries which are non-EU Member States. This court may even have competence to decide on the invalidity defense with regard to those parts of the European patent with inter partes effect, i.e. a scope limited to the parties to the proceedings. The reason for the different assessment of the validity compared to EU Member States is that Art. 24 no. 4 Brussels Ibis Regulation does not apply with regard to non-EU Member States2.
However, in order to argue that the patent-in-suit is invalid before the UPC, the defendant must file a counterclaim for revocation (Art. 65 (1) UPCA). Without filing a counterclaim, the invalidity defense does not need to be addressed by the UPC (Vienna Local Division, decision dated January 15, 2025, UPC_CFI_33/2024). A decision on the counterclaim for revocation (in principle, see below) has erga omnes effect and is not limited to the parties to the proceedings.
It remains to be seen whether the UPC – re. non-EU Member States – will allow an “exception” to the rule of (formally) having to file a counterclaim “for revocation” and would also consider a mere invalidity defense (with inter partes effect)3 or if it will decide that a counterclaim can have inter partes effect regarding the non-EU Member States4. As a decision by the UPC on validity with erga omnes effect is in no case possible for those parts of the European patent which are validated in non-EU Member States (and more broadly: non-UPCA Member States), the defendant may file a revocation action before the national courts of the non-UPCA Member States or initiate the EPO opposition proceedings (if the 9-month time window for filing an opposition is still open), to ultimately gain legal certainty, e.g., for group members or suppliers and customers. A stay of the UPC infringement proceedings re. non-UPC Member States may, however, be unlikely in this scenario, given that the UPC can itself adjudicate validity with inter partes effect.
Cross-border constellations are already known in the case law of the UPC. The Düsseldorf Local Division accepted its jurisdiction inter alia for an infringement action with regard to the UK part of the European patent even before the judgment of the CJEU was issued (decision dated January 28, 2025, UPC_CFI_355/2023). Later, the Milan Local Division applied the principles of international jurisdiction as clarified by the CJEU and decided that it is also competent to decide on an infringement action concerning those parts of the European patent which are validated in non-UPC Member States, e.g., in Spain, against the defendant domiciled in Italy (final order dated April 8, 2025, UPC_CFI_792/2024 App. 61708/2024). Furthermore, the Paris Local Division confirmed its competence for infringement actions based on the European patent which is validated inter alia in Spain, Switzerland, and UK (order dated March 21, 2025, UPC_CFI_702/2024).
Importantly, the long-arm jurisdiction of the UPC extends only to the EPC countries as the jurisdiction of the UPC is limited to the Unitary Patents and/or European patents (Art. 2 (g), Art. 32 (1) UPCA). The UPC is thus not competent for infringement actions with regard to the third countries which are non-EPC countries, e.g., the USA.
3.2 Damage arising outside the EU (if defendant is domiciled outside of the EU and Lugano Convention)
In the proceedings concerning an infringement of the Unitary Patent and/or the European bundle patent against a defendant who is neither domiciled in an EU Member State nor in a Member State of the Lugano Convention (e.g., Switzerland)5, the UPC can still have international jurisdiction in relation to damages arising outside of the EU, e.g., in the UK (Art. 71b No. 2, No. 3 Brussels Ibis Regulation).6 To establish a long-arm jurisdiction of the UPC for damage suffered outside of the EU, further requirements must be met: Property belonging to the defendant has to be located in any UPC Member State and the dispute must have a sufficient connection with any such UPC Member State.
However, the UPC’s competence for injunctive relief in such cases is limited to the UPC Land based on the Unitary Patent and/or parts of the European bundle patent validated in the UPC Member States.