UPC Report 04|25

Local division has long-arm jurisdiction at the defendant’s domicile in infringement matters

Following on from the ECJ’s decision of 25 February 2025 in BSH v Electrolux (C-339/2022), the Milan Local Division has ruled that the principles formulated by the ECJ also apply to the UPC (order of 8 April 2025, UPC_CFI_792/2024 – Alpinestars v Dainese). The Milan Local Division accordingly held that it had universal jurisdiction pursuant to Articles 4(1), 71a and 71b Brussels I Regulation (recast) to adjudicate on an infringement action against a defendant domiciled in Italy – including on the infringements in EU Member States not party to the UPCA (here: Spain). The Düsseldorf Local Division had already ruled in favour of such “long-arm” jurisdiction before the ECJ’s decision (Düsseldorf Local Division, decision of 28 January 2025, UPC_CFI_355/2023 – FUJIFILM v Kodak, see also UPC Report 1|25). Since the ECJ takes the view that the jurisdiction of the court at the defendant’s domicile that is seized of the action for infringement is not affected if the defendant challenges the validity of the patent, the question arises whether the UPC may or must partially stay the infringement proceedings if a national action for revocation is filed in a third state. The UPC Rules of Procedure do not address this situation.

No UPC jurisdiction over patents that lapsed before 1 June 2023

On 2 April 2025, the Mannheim Local Division issued a decision (decision of 2 April 2025 – UPC_CFI_365/2023 – FUJIFILM Corporation v Kodak) denying UPC jurisdiction over national patents (including national parts of European patents) that lapsed before 1 June 2023. According to the Mannheim Local Division, any claims arising from such lapsed patents must be asserted before the national courts. This applies to UPCA member states and non-UPCA member states alike.

In cases where the national part of a European patent remains in force in a UPCA member state after the entry into force of the UPCA, the UPC also has jurisdiction for acts of infringement committed there before the UPCA entered into force on 1 June 2023, but must apply national law in this respect (decision of 11 March 2025 – UPC_CFI_162/2024 – Hurom v NEC, see also UPC Report 3|25). The Mannheim Local Division has not yet dealt with the question of whether this also applies to the UK part of a European patent where this part is still in force.

The Düsseldorf Local Division takes the view that the UPC does have jurisdiction for actions for the infringement of a European patent’s UK part that is still in force (decision of 28 January 2025 – UPC_CFI_355/2023 – FUJIFILM Corporation v Kodak, see UPC Report 1|25). It remains to be seen whether the Mannheim Local Division will also rule that the UPC has long-arm jurisdiction for the UK. The ECJ’s considerations in BSH v Electrolux (C-339/2022) are not directly applicable in this respect because the UK is not an EU Member State.

Jurisdiction of local division in cases involving multiple defendants

With regard to jurisdictional requirements in cases involving multiple defendants, the Munich Local Division has recently taken a broad approach to Article 33(1)(b) UPCA: In the case of a European patent, the Local Division held “the same infringement” to exist where multiple defendants are accused of infringing different national designations of the same European patent by the same product or process (decision of 4 April 2025 – UPC_CFI_501/2023 – Edward Lifesciences v Meril). It was not necessary for the defendants to have jointly committed the same act of infringement (e.g., contributing to the same act of sale). The Munich Local Division also set a low bar for proving that the required “commercial relationship” existed between all the defendants. It would appear that a claimant is not required to demonstrate that all the defendants have a commercial relationship concerning the infringing embodiment; membership of a group of companies will apparently suffice. In the specific case, the Munich Local Division considered it sufficient that the German anchor defendant was the European headquarters of the group of companies and concluded, based on this (without giving further details), that this defendant was responsible for a group company based in Italy that did not itself appear as a source of supply of the infringing embodiment. 

Preliminary objection due to invalid withdrawal of opt-out 

The Mannheim Local Division has dismissed a preliminary objection (Rule 9 RoP) in which the defendant argued that the UPC lacked jurisdiction because the claimant’s withdrawal of an opt-out was invalid, as inadmissible (Article 83(4) UPCA) (order of 4 April 2025 – UPC_CFI_750/2024 – Samsung Electronics v Fingon).

The defendant maintained that the withdrawal of the opt-out was invalid because the party declaring the withdrawal did not have material ownership of the patent-in-suit. The Mannheim Local Division ruled that questions of fact and law (here: patent ownership) that are relevant both for the decision on the UPC’s jurisdiction (here: validity of the withdrawal of the opt-out) and for the decision on the merits of the case (here: standing to sue) are not to be decided in the preliminary objection proceedings, but rather in the main proceedings. This would also be in the defendant’s interest, it held, because a dismissal of the action at the preliminary objection stage would not prevent the claimant from filing another action later on the basis of better evidence, but a dismissal in the main proceedings would.

While Rule 20.2 RoP allows the UPC – in circumstances like the ones of the decided case – to decide on the preliminary objection in the main proceedings, the Mannheim Local Division only considered this as an alternative if the preliminary objection were to be admissible.

Product-by-process claims

The Düsseldorf Local Division has ruled that, in the context of product-by-process claims, the process referred to is not itself protected and does not restrict the scope of protection. What matters is whether the product actually exhibits the technical features or the properties according to the invention that the process is intended to impart (decision of 10 April 2025 – UPC_CFI_50/2024 – Yellow Sphere v Knaus Tabbert). The key issue was how a skilled person interprets the information regarding the manufacturing process and what conclusions they draw from this regarding the properties of the product according to the invention. The Düsseldorf Local Division also noted that the process feature “typically” serves the function of further specifying what the product actually is where the other physical and spatial features are not enough to set it apart. If the manufacturing process results in product properties that are attainable only through that process and such properties can be identified in the finished product, then the scope of protection is limited to products that can be manufactured using that process, it held.

Compensation for use of a published EP application 

The Düsseldorf Local Division has confirmed that the UPC may also award financial compensation for use of a disclosed EP application, Article 32(1)(f) UPCA (decision of 10 April 2025 – UPC_CFI_50/2024 – Yellow Sphere v Knaus Tabbert). The compensation is governed by the national laws of the EPC Contracting States, as Article 67 EPC delegates the specifics of the protection conferred by the publication of an EP application to the Contracting States, and neither the UPCA nor the Unitary Patent Regulation contains uniform provisions on this. The claimant must demonstrate that the conditions for appropriate compensation under the national laws of each EPC Contracting State covered by the action have been met. The Düsseldorf Local Division did not have to consider the question of whether this “mosaic approach” was also to be applied to European patents with unitary effect – a question likely to merit an affirmative answer – or whether compensation could instead be uniformly governed by the law applicable under Article 7 Unitary Patent Regulation.

Munich Local Division to apply EPO’s problem-solution approach 

The Munich Local Division has stated that it intends to apply the problem-solution approach – as used by the EPO and its Boards of Appeal – when assessing inventive step, however with the caveat “to the extent feasible” (decision of 4 April 2025 – UPC_CFI_501/2023 – Edward Lifesciences v Meril). The Local Division assumes that this approach should lead to the same results in the majority of cases as the test of inventive step according to the principles developed by the Federal Court of Justice. Both require a “realistic starting point” and an incentive for the skilled person to do the “next step” to amend the solution disclosed in the prior art in such a way as to arrive at the patented teaching, it held. The Local Division hopes that this will further align the case law of the UPC with that of the EPO’s Boards of Appeal, although it does not explain when the caveat “to the extent feasible” could apply, i.e. in which cases it would not be possible to follow the problem-solution approach.

Seizure of invoices and delivery notes for the purpose of preserving evidence

A request for the preservation of evidence and inspection of premises (Article 60 UPCA) may also serve to preserve evidence of individual acts of use and be directed at the seizure of invoices and delivery notes if there is a corresponding interest in preserving evidence. This was the conclusion reached by the Düsseldorf Local Division (order of 16 April 2025 – UPC_CFI_539/2024 – Bekaert Binjiang Steel Cord v Siltronic and others).

It held that the preservation of evidence and inspection of premises was in particular not limited to the design of a contested embodiment. The list specifying what the Court may order (Rule 196.1 RoP) was not exhaustive, and the required measures were instead to be determined on a case-by-case basis and taking the specific interest in preserving evidence into account. The Düsseldorf Local Division also noted that in the case before it, the suspected infringements had taken place in Germany (among other countries); the interest in preserving evidence therefore also related to invoices and delivery notes serving as evidence of such infringements.

Local division has broad discretion in granting leave to change claim and parties

The UPC Court of Appeal has ruled that extensive amendments of a claim are permissible, noting that local divisions have broad discretion in this regard (decision of 11 April 2025 – UPC_CoA_169/2025 – Supponor v AIM Sport). Following preliminary objection proceedings (cf. UPC Court of Appeal, decision of 12 November 2024 – UPC_CoA_489/2024 – Supponor v AIM Sport, see UPC Report 1|25), the claimant filed an amended statement of claim (as an appendix with a markup version) in which, for the first time, additional infringements in Germany and Spain were asserted, including, for the first time, for equivalent patent infringement. The claimant also extended its claim to include another company in the defendant’s group that was allegedly responsible for the infringements in Germany together with other defendants. The Helsinki Local Division permitted all of the amendments (order of 11 February 2025 – UPC_CFI_214/2023 – AIM Sport v Supponor).

The UPC Court of Appeal concluded that the Helsinki Local Division had not exceeded the broad discretion granted to it. The Court held that the interest in avoiding an additional legal dispute against the new defendant that could have a contradictory outcome justified permitting a new party to be added, even if the claimant could have made this change earlier. This applied even if the claimant itself had already initiated additional national infringement proceedings (against other group companies based on the same patent and the same contested embodiments). The Court of Appeal relied in particular on the fact that the legal dispute was still “in its early stages” (even after more than 18 months) and that there had only been a statement of claim and a preliminary objection but no further pleadings. It ruled that the defendants’ interests were safeguarded by the fact that they were again being given the full three months to respond to the new statement of claim.

The Court of Appeal’s decision stands out for a number of reasons, including the limited standard of review applied by it. It should not be misunderstood as a departure from the UPC’s “front-loaded approach”, but does make it clear that the Court supports a pragmatic approach to amendments of claims.

Amendment of infringement action based on application to amend patent

The Munich Local Division has clarified that a claimant is permitted to amend an infringement action (Rule 263 RoP) by introducing, into the infringement proceedings, the (auxiliary) requests for a restricted defence of the patent asserted in the response to a counterclaim for revocation (order of 31 March 2025 – UPC_CFI_425/2024 – JingAo Solar v Chint New Energy Technology and others). It held that it would “make no sense” and would contradict Rule 30.1(b) RoP, according to which an application for amendment of the patent must contain an explanation of why the amended claims are infringed, if it were not possible to make the amended claims the subject of the infringement proceedings.

The Munich Local Division also clarified that an (auxiliary) request to amend the patent (Rule 30 RoP) did not have to be directly related to the invalidity arguments raised in the counterclaim for revocation or be prompted by them. The patent proprietor was instead free to also file (auxiliary) requests to amend the patent that were not directly prompted by the revocation action.