Tilman Pfrang, LL.M. | 11th March 2025
UPC Asserts Long-Arm Jurisdiction Beyond EU Borders
In a groundbreaking decision (Case No. UPC_CFI_376/2023) – as a prequel to the CJEU decisions summarized below – the UPC extended its authority to address patent infringement acts occurring outside the European Union, including the UK. The court justified its jurisdiction by noting that the alleged infringer operated in multiple EU jurisdictions covered by the UPC, aligning with Article 71(b) of the Brussels Ibis Regulation. This precedent allows patent holders to pursue coordinated enforcement across borders, even in non-UPC territories, potentially complicating litigation strategies for businesses operating both within and outside the UPC’s direct reach.
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Munich Local Division Addresses Jurisdiction and Preliminary Objections
On February 5, 2025, the UPC’s Local Division in Munich clarified procedural and jurisdictional issues regarding counterclaims for revocation, specifically addressing a second counterclaim for revocation lodged by the same party before the same Division. The UPC Local Division in Munich confirmed that Rule 19 of the Rules of Procedure, which regulates preliminary objections to jurisdiction, extends to counterclaims for revocation. Further, the Munich LD ruled that Article 33(2) UPCA prevents multiple counterclaims on the same patent between the same parties within the same division.
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Clarification on In-House Legal Representation
In an order dated February 11, 2025, the UPC’s Court of Appeal clarified the concept of “independence” under Article 48(5) UPCA. The court confirmed that corporate representatives or major shareholders with extensive administrative and financial powers within a company may not represent that company before the UPC. However, in-house counsel and European patent attorneys employed by the litigant may act as representatives if they can demonstrate the capacity to act independently, ensuring unbiased representation.
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CJEU Ruling on Cross-Border Patent Infringement and Jurisdiction
The Court of Justice of the European Union (CJEU) issued a landmark decision (Case C‑339/22, BSH Hausgeräte GmbH v Electrolux AB) on February 25, 2025, clarifying jurisdiction in cross-border patent disputes. The ruling determined that when patent validity is challenged solely as a defense in an infringement action, the court of the defendant’s domicile retains jurisdiction. This applies even if the patent is validated in non-EU countries, allowing the domicile court to assess validity inter partes. This decision may enhance the UPC’s attractiveness but could also introduce competition from national courts in handling such disputes.
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