How long are the arms of the UPC?

Another jurisdiction decision from the UPC - this time in relation to Spain

🧁 Short & sweet

Spain is not signed up to the UPC Agreement, so does the UPC have jurisdiction for Spain? 

Yes it does! The UPC can determine infringement of European patents covering non-UPC countries – this time in respect of Spain - if proceedings are started before the defendant’s domicile in a UPC jurisdiction.

 🤷 Issues considered

Spain, Poland and Croatia are the only EU countries that have not signed the UPC Agreement (UPCA). There are also six others that have signed but not yet ratified the UPCA (Cyprus, Czech Republic, Greece, Hungary, Ireland, Slovakia).

Dainese brought an action before the LD Milan alleging infringement in the "Territory for Relief" - defined as "the territories of the Contracting Member States of the Unified Patent Court Agreement (hereinafter "UPCA") and Spain". 

The issue of jurisdiction for Spain has now been considered in Dainese S.p.A. v. Alpinestars S.r.l., 8 April 2025. 

The Court’s reasoning follows the key points of the CJEU decision in BSH v. Electrolux (C-399/22), as well as both previous UPC decisions on this matter (LD Dusseldorf, Fujifilm v. Kodak, 28 January 2025, and LD Paris, Mul-T-Lock v. IMC Creation, 21 March 2025). 

In a nutshell, according to the Court:

1. The UPC is subject to the EU Regulation Brussels Recast and should, therefore, be deemed as a national Court of a Member State.
2. As also stated by CJEU, if proceedings are initiated at the defendant’s domicile, the relevant national courts - including UPC divisions - have “universal” jurisdiction, also for European patents validated in non-UPC countries.  
3. It follows that the UPC division of a defendant’s domicile can determine issues of infringement of European patents validated in non-UPC countries.  
4. According to the Court, a different interpretation would lead to the conclusion that UPC has less territorial jurisdiction than other national courts - contrary to Brussels Recast!

The Court therefore rejected the defendant’s preliminary objection, confirming the UPC's jurisdiction over the Spanish designation of the European patent. 

 🫵 What does this mean for you?

The LD Milan’s order is consistent with two earlier UPC decisions on jurisdiction and reflects the UPC’s apparent appetite to adjudicate on infringement in non-UPC countries, and grant long-arm relief, following the CJEU decision in BSH v. Electrolux. 

This makes the UPC potentially an even more attractive forum for those looking to enforce patents in Europe. 

On the other side, all operators must be very careful: even if they have business exclusively in non-UPC countries - like Spain or even UK and Turkey (the latter being non-EU countries but subject to the EPC system) - they might still find themselves caught under UPC jurisdiction, if (i) their domicile is in a UPC country and (ii) a European patent has been infringed!