To mark the second anniversary of the UPC, we examine the relationship between the UK patents jurisdiction and the UPC.
In part one we explain the UPC’s long-arm relationship with the UK. In part two we examine how defendants might respond in an attempt to prevent long-arm jurisdiction by the UPC and in part three we ask whether the UK should consider joining the UPC in future.
Part one: the UPC’s long-arm jurisdiction over the UK
What is the ‘long-arm jurisdiction’ of the UPC? The answer to this question is nuanced and it has developed since the UPC opened on 1 June 2023.
The ‘original’ long-arm jurisdiction for non-EU domiciled defendants
By the time the UPC came into force, the (recast) Brussels I Regulation 1215/2012 had already been amended by Regulation 542/2014 (together, the Brussels Regulation), to both define the UPC as a ‘common court’ of the member states and also to equip it with two particular cross-border powers. These are:
- under Brussels Regulation Art 71b(2): providing the UPC with the power to grant preliminary injunctions covering both UPC countries and ‘third States’ against defendants not domiciled in an EU member state. Third States means non-EU countries such as the UK.
This added to an already existing power under the Court of Justice of the European Union (CJEU) Solvay v Honeywell (616/10) ruling, to order cross-border preliminary injunctions against non-UPC EU countries (such as Spain and Poland) in certain factual scenarios where the defendant is domiciled in the EU
- under Brussels Regulation Art 71b(3): providing the UPC with the power to order damages against defendants that are not domiciled in the EU, in respect of infringements taking place in third States.
This power comes with the proviso that Such jurisdiction may only be established if property belonging to the defendant is located in any Member State [of the UPC] and the dispute has a sufficient connection with any such Member State’.
These provisions thus established cross-border reach of the UPC to award preliminary injunctions and damages in respect of the UK, although none has been the basis of such a decision to date.
The ‘new’ long-arm jurisdiction for EU domiciled defendants
The CJEU's ruling in BSH v Electrolux (C339/22) on 25 February 2025 has now introduced a new power that can be used by EU courts, including the UPC. Provided the defendant has their domicile in the territory of an EU national court or the UPC, this power enables infringement decisions to be made and remedies awarded, apparently including damages and a final injunction, applying to other jurisdictions, both EU and non-EU. Like the powers described above, it thus includes equivalent parts of a European patents in force in the UK.
There is, however, a difference in application as regards other EU countries and non-EU countries:
- as regards other EU countries: the EU court making the decision (or the UPC) may not make a final decision on the validity of the patent. It may also stay its infringement proceedings to allow the court of the country in which the patent is registered to rule on validity if ‘there is a reasonable, non-negligible possibility of that patent being declared invalid by the court of that other Member State that has jurisdiction.’
- as regards non-EU countries: the court making the decision can decide on infringement and validity in respect of the non-EU patent, although the validity decision only takes effect inter partes and does not revoke the patent.
BSH v Electrolux thus allows the UPC to make decisions on infringement and validity of a UK patent that are binding against an EU domiciled defendant.
Application of BSH v Electrolux in the UPC
In the time since the CJEU’s ruling in BSH v Electrolux, it has already been applied in principle at the interim stage of actions in the UPC; for example, by the Local Division of Paris, in Mul-T-Lock v IMC Créations (UPC_CFI_702/2024, 21 March 2025), in which the UPC has accepted jurisdiction to hear an infringement action concerning Spanish, Swiss and UK patents (decision on the merits awaited).
As a consequence of the above developments, and in particular BSH v Electrolux, infringement actions brought in the UPC that apply to infringing activity of an equivalent UK part of the European patent bundle may become a regular feature of UPC litigation.
In part two, how can long-arm reach be prevented in the UK?
