UPC Claimants take care, Defendants beware – broader territory can be ensnared
Written By
Counsel
France
Working as Counsel in our Paris Intellectual Property Group, I draw on both my R&D engineering experience and on my registered French and European patent attorney experience to advise our clients on all phases of patent litigation matters.
Decisions of the Unified Patent Court (UPC) typically cover all contracting member states included in the claimant’s claim. But what happens if a new member state joins the UPCA after the claimant’s initial application?
The UPC Court of Appeal provided clarity on this matter in the Syngenta v. Sumi Agro case, with its ruling on 3 March 2025.
In this case, Syngenta applied for provisional measures against Sumi Agro based on EP2152073 on 30 April 2024. On 27 August 2024, the Munich Local Division granted a provisional injunction, covering 13 UPC member states.
Expansion of Injunction
Sumi Agro appealed the decision, but Syngenta not only requested the dismissal of the appeal—it also asked for Romania to be added to the territory of the injunction.
Romania had deposited its instruments of ratification on 31 May 2024 and officially acceded to the UPCA on 1 September 2024, after Syngenta's application for provisional measures.
Sumi Agro argued that Syngenta’s request contradicted "basic principles," stating that an appeal filed against a provisional injunction should not result in an even broader injunction.
However, the Court of Appeal disagreed, using its discretion to allow Syngenta’s claim. The court ruled that once a UPC Signatory State ratifies and accedes, the application of Article 34 UPCA (Territorial scope of decisions) should be “automatic and not subject to limitations, from the day of accession”.
The Court of Appeal’s wording says that this broadening of the territorial scope is automatic. However, as part of their initial claim, claimants should specifically list the member states in which they wish to have the decision taking effect. Claimants, as a precautionary measure, may also be advised to include an additional request that any decision also extends to any UPC contracting member states where the patent is in force at the time of the decision. They may otherwise seek leave to extend the territory of the remedy to a newly acceded member state in the course of the proceedings.
Buyer beware
This relates to all actions and remedies (e.g. infringement/injunction/revocation etc) and makes it clear that the claimant also seeks the remedy to apply in any newly acceded member state before the final decision is issued. Defendants need to be aware that the territorial scope of a decision may broaden should a state ratify the UPCA after an action has been started and before a final decision has been issued (and this includes any appeal). Defendants may therefore end up facing a broader territorial scope (e.g. for injunction or revocation) than they had anticipated at the outset.
As a reminder, Cyprus, Czech Republic, Greece, Hungary, Ireland, and Slovakia have signed the UPCA but have not yet ratified and deposited their instruments of ratification at the European Council. Of course, this doesn’t mean that these six countries cannot be covered by a UPC injunction at present - but that’s a different issue entirely.
