UPC: Jurisdiction for infringement actions against several companies located domestically and abroad (Local Division Munich)

In a decision dated 20 June 2025, the Munich Local Division of the Unified Patent Court (UPC) ruled on several preliminary objections to its international jurisdiction. The decision concerns a cross-border patent infringement action against four different companies.

1. Facts of the case

The Claimant alleges that various mobile devices infringe its European patent. The complaint was directed against: Two affiliated companies based in the USA (Defendants 1 and 2), a German distribution company belonging to the same group (Defendant 3), and a Dutch logistics company (Defendant 5), which was allegedly involved in the distribution of the devices.

In the Statement of Claim, the Claimant had cited Art. 33 (1) lit. b UPCA as the basis for the jurisdiction of the Local Division Munich. The Defendants filed a preliminary objection pursuant to R. 19 RoP, contesting jurisdiction and arguing, inter alia, that there was no relevant business relationship between the Defendants. The Claimant then supplemented its submission in the Statement of Defence with Art. 33 (1) lit. a UPCA referring to a specific delivery of a mobile device to Munich.

2. Decision of the Local Division Munich

The Local Division Munich rejected the Defendant’s preliminary objection. The preliminary objection of Defendants 1 and 2 was already inadmissible as they only filed their objection after the one-month period had expired. The preliminary objection of Defendants 3 and 5, on the other hand, was admissible but not well-founded.

a) Defendant 3 (German distribution company)

With regard to the German subsidiary, the Local Division Munich derived its jurisdiction directly from Art. 33 (1) lit. b sentence 1 UPCA. As Defendant 3’s principal place of business is in Germany, a German Local Division has local jurisdiction irrespective of the specific place of infringement. The further complaint of a lack of substantiation of the infringement allegations was irrelevant to the examination of jurisdiction.

b) Defendants 1 and 2 (US companies)

The court has already dismissed the preliminary objections of Defendants 1 and 2 as inadmissible. Defendants 1 and 2 did not file their preliminary objections until after the one-month time period pursuant to R. 19.1 RoP had expired. In cases of service outside the Contracting Member States, it is the actual service that matters, as the 10-day fiction under R. 271 (6) (b) RoP only applies to service within the Contracting Member States, not outside them. Defendants 1 and 2 did not comply with the one-month time limit based on the actual service of the Statement of Claim.

Notwithstanding this, the Court examined the merits of the preliminary objection alternatively. The Court found that the Local Division Munich had jurisdiction over the complaint against these two Defendants pursuant to Art. 33 (1) lit. b sentence 2 UPCA. The decisive factor was that one of the co-defendants (Defendant 3) has its registered office in Germany and that a business relationship within the meaning of the UPCA exists between the Defendants, as well as the fact that the same infringement allegation is made. The Chamber clarified that the requirements for a “business relationship” should not be set too high. An intra-group relationship and division of labour in the context of distribution are already sufficient.

c) Defendant 5 (Dutch logistics company)

The Munich Local Division affirmed jurisdiction for Defendant 5 on the basis of either Art. 33 (1) lit. b sentence 2 or lit. a UPCA. Although Defendant 5 does not belong to the same group as the other Defendants, the Court nevertheless found that a business relationship existed within the meaning of Art. 33 (1) lit. b sentence 2 UPCA, as the company operates as a logistics service provider for the group throughout Europe.

In the alternative, the Court also affirmed jurisdiction pursuant to Art. 33 (1) lit. a UPCA, as Defendant 5 also supplied the devices to Germany. In this context, the Court emphasised that the examination of jurisdiction did not depend on proof of infringement, but only on the Claimant’s submission.

This is also not contradicted by the fact that the Claimant only relied on the jurisdiction of Art. 33 (1) lit. b UPCA in the Statement of Claim. It is true that R. 13.1 (n) RoP presupposes that the Claimant must already make legal submissions with the Statement of Claim. However, this does not require the Claimant to anticipate all possible lines of defence. R. 13.1 (n) RoP does not prevent the Claimant from further specifying their defence or responding to objections raised by the Defendant.

3. Conclusion

The decision of the Local Division Munich is in line with the previous UPC case law and demonstrates that the UPC is a forum for efficiently bundling cross-border patent infringement proceedings in one place. The decision provides practical guidance on the following points in particular:

• The time period for filing a preliminary objection begins with the actual service in cases involving service outside the Contracting Member States. Entries in the CMS are not relevant.
• The requirements for a “business relationship” within the meaning of Art. 33 para. 1 lit. b sentence 2 UPCA should be interpreted broadly and include intra-group and logistical links.
• In principle, additional jurisdictional provisions can be invoked during the proceedings, even if they were not expressly mentioned in the Statement of Claim. However, for reasons of legal prudence, both of the jurisdictional elements set out in Art. 33 (1) UPCA should be invoked in the Statement of Claim, if possible.

Carsten Plaga

Handelsblatt / Best Lawyers in Germany 2025 – Kather Augenstein again honored in the categories of intellectual property law and conflict resolution

Handelsblatt, in collaboration with the renowned US specialist publisher Best Lawyers, has published the 17th edition of its annual ranking of leading lawyers in Germany. Kather Augenstein has again been listed in intellectual property and litigation.

We are delighted to announce the special recognition received by Dr. Peter Kather, Dr. Christof Augenstein, Miriam Kiefer LL.M., Christopher Weber and Sören Dahm, who have been named among the best lawyers in Germany in their respective fields of intellectual property law. Also in the field of intellectual property law, Dr. Benjamin Pesch was named one of this year’s Ones to Watch – Lawyers of the Future. This award is given to lawyers who have distinguished themselves through outstanding achievements in their young careers. They have generally been practising for 3-8 years.

In addition, Dr. Christof Augenstein and Christopher Weber were listed as best lawyers in Germany in the field of litigation.

The ranking is based on an independent peer review survey of lawyers who make recommendations outside their own law firm. This award is therefore both a significant seal of quality and a high level of professional recognition within the industry.

We would like to thank our clients for their continued trust and our colleagues for their special appreciation.

Prestigious Recognition: Dr Christof Augenstein Listed in IAM Strategy 300 – The World’s Leading IP Strategists 2025

Kather Augenstein is delighted to announce that its partner, Dr Christof Augenstein, has been ranked among the IAM Strategy 300 – The World’s Leading IP Strategists 2025.

This prestigious recognition highlights Dr Augenstein’s exceptional strategic vision and achievements in the field of intellectual property. The IAM Strategy 300 is widely regarded as the definitive guide to the world’s leading IP strategists, featuring top professionals from renowned in-house teams, law firms, and specialised service providers.

Inductees are celebrated for their ability to generate outstanding value through innovative, forward-looking IP strategies. Dr. Augenstein’s inclusion reflects his tireless pursuit of excellence, strategic insight, and international recognition among peers.

Kather Augenstein warmly congratulates Dr Christof Augenstein on this distinguished honor, acknowledging his significant contributions to advancing intellectual property strategy.

The full IAM Strategy 300 – The World’s Leading IP Strategists 2025 list is available here.

Kather Augenstein appoints Carsten Plaga as Counsel, effective 1 July 2025

Carsten Plaga joined Kather Augenstein in 2018 and advises national and international clients in all areas of intellectual property law.

Carsten Plaga already established his professional specialisation during his studies at the University of Osnabrück, where he focused on German and European competition and intellectual property law. During his legal clerk, he gained practical experience at an international IP law firm in Düsseldorf and at a medium-sized law firm specialising in patent and copyright law in Osnabrück.

Carsten Plaga is an active member of the German Association for Industrial Property and Copyright Law (GRUR), the Centre for Corporate Law in Osnabrück (CUR) and the International Association for the Protection of Intellectual Property (AIPPI). He regularly gives lectures, in particular on patent law aspects, including at the German Lawyers’ Academy.

“In Carsten Plaga, we have a dedicated colleague who impresses with his expertise and unwavering commitment to client service“ says Miriam Kiefer, Managing Partner at Kather Augenstein. “His appointment reflects his past contributions, including our firm’s preparations regarding the UPC Case Management System, as well as our confidence in his continued success.”

The Court of Appeal of the Unified Patent Court (UPC) has clarified its case law on provisional measures in a series of decisions.

I. UPC_CoA_540/2024, 24.02.2025 – Necessity

In this decision, which was issued between competitors in the medical technology sector, the Court of Appeal emphasizes that the adoption of provisional measures requires that it can be proven that the outcome of the main proceedings cannot be awaited (so-called necessity). This is explicitly stated in the 22nd recital of the Enforcement Directive (2004/48/EC). A merely summary scope of review is only justified if the main proceedings cannot be awaited, for example if there is a threat of irreparable damage, although this is not a mandatory requirement.

In the specific case, the Court of Appeal did not consider interim measures necessary because the patent was granted in existing competitive relationships. The challenged product had already been on the market for years, which is why the applicant did not succeed in proving that this “status quo” now had to be changed for the time being and that the main proceedings could not be awaited.

Further attempts by the applicant to prove the necessity of their request were also unsuccessful. According to the Court of Appeal, it could not be concluded from participation in a trade fair last year that the product would also be exhibited there on the upcoming date. The applicant had to prove that the specific product would actually be exhibited at the trade fair. Nor did the applicant succeed in proving that the products were typically stocked, which would lead to a longer loss of demand. The respondent proved that a substitute was now available and that the challenged product was no longer sold in large quantities.

With regard to past tenders from major customers, it was also not sufficiently proven that the contract was awarded in favour of the respondent and to the detriment of the applicant.

The decision is a warning to applicants for interim measures not to underestimate the burden of proof regarding the necessity of their request. Trade fairs in particular are often the starting point for patent law disputes. As discussed, the Court of Appeal here requires proof that the specifically challenged product will actually be or is being exhibited.

II. UPC_CoA_523/2024, 03.03.2025 – Risk of first infringement

In further proceedings, the applicant was able to obtain a preliminary injunction against a competitor and its herbicide. The Court of Appeal confirmed the injunction. The special feature of the case was that the applicant was seeking an injunction in all countries in which its European patent had been validated, but the respondent had not yet been able to obtain official approval for its weedkiller in all of these countries.

In previous decisions (CFI_165/2024 and CFI_166/2024 of 06.09.2024), the Düsseldorf Local Division had ruled that there was no risk of first infringement if there was not yet a marketing authorization for a pharmaceutical product. However, this should always be considered on the basis of an overall assessment of the individual case.

And indeed, the current decision of the Court of Appeal distinguishes as there was already a marketing authorization at least in individual states of the UPC area. Therefore, there was a risk that such market authorizations could be granted for further EPG states in the future and that distribution would be expanded.

The decision thus fits into the existing case law. It is practice-oriented and offers patent proprietors the protection they expect from a multinational court, as the legal examination does not end at national borders. Since the problem of the risk of first infringement in the absence of market authorization often arises with pharmaceutical products, the practitioner can remember the keyword “risk of infection” here. Market authorization in individual validation states is sufficient to infect others with the risk of first-time use.

III. UPC_CoA_382/2024 14.02.2025 – General ruling and information

In the last decision discussed here, the Court of Appeal confirmed a so-called general injunction. The respondent was ordered to refrain from all patent-infringing acts, even though no patent-infringing products had been manufactured in Germany to date. This approach is, for example, foreign to the national courts in Germany, which only assume the risk of first infringement and repetition for acts that have already occurred, are imminent or occur downstream in the distribution chain. Accordingly, production is therefore not usually prohibited if only distribution has taken place to date.

The Court of Appeal is thus following the example of British and Dutch courts, which are familiar with such a general injunction of any kind for first-time infringements. It therefore comes as no surprise that the decision was made by the Court of Appeal’s second panel, chaired by Rian Kalden from the Netherlands, following the first-instance decision by the local division in The Hague.

The decision also confirms that applicants can also obtain information under Art. 67 UPCA in interim proceedings in order to uncover further distribution channels. However, the Court of Appeal makes clearifies that this should not generally include price information. This is primarily relevant for the determination of damages following the main proceedings.

For German practitioners in particular, this means a change of wind. Section 140b (3) in conjunction with (7) German Patent Act does not grant the court any discretion (“must provide information”). Subsequently, German courts have also ordered the respondent to provide price information by way of interim injunctions.

For this reason, Section 140b German Patent Act is regarded by parts of the literature as a transposition error of the Enforcement Directive (see for example: Ann, 22nd edition, § 35, para. 105). It seems unfair to provide the patent proprietor with price information that enables them to make offers that distort competition, even though the patent infringement has not yet been established in the main proceedings.

The Unified Patent Court does not continue to do so and exercises its discretion under Art. 67 UPCA in a textbook manner.

Robert Knaps

On the territorial scope of injunctive relief and the burden of demonstration and proof for the complainant (R. 13m RoP and R. 171.1 RoP), Local Division Paris, decision of 24 April 2025, UPC_CFI_440/2023)

In proceedings concerning an infringement action, the Local Division of Paris had to deal with the question of the claimant’s burden of demonstration and proof with regard to the defendant’s acts of infringement in individual UPC-States.

Facts of the case

The subject of the proceedings was a complaint against a French company belonging to a European distribution group. It distributes UVC LED chips in France, which the claimant considers to be patent infringing. The defendant’s manufacturer and supplier, a company incorporated under Korean law, joined the lawsuit at the defendant’s application. The claimant is the owner of the patent in suit. It applied for an injunction for the French, German, Dutch and British territories. The claimant demonstrated the infringing behaviour in France by submitting a screenshot of the French sales page. It also made a test purchase in France via the French website. The defendant did not contest the act of infringement as such for any of the UPC-States covered by the claim.

Decision of the Local Division

The Local Division found patent infringement and ordered the defendant, inter alia, to cease and desist. However, the injunctive relief was only limited to the territory of France, while the Local Division dismissed the application for an injunctive rekuef with regard to Germany, the Netherlands and the United Kingdom.

The Local Division based its partial dismissal of the action on the lack of substantiation of the infringing acts for Germany, the Netherlands and the United Kingdom. According to R. 13m RoP and R. 171.1 RoP, it was incumbent on the claimant to provide evidence of all facts relating to the alleged infringing acts. However, the claimant has only made a test purchase in France, but not for the other UPC States applied for and the United Kingdom. The website extracts submitted by the claimant show a sectorisation of the sales territories. Thus, the claimant has not demonstrated and proven that acts of infringement are also carried out by the defendant in the three other countries. Although it is a European distribution group as a whole, the claimant has only taken action against the French defendant.

Conclusion

The decision of the Local Division Paris is surprising. It contradicts Art. 34 UPCA, according to which, in the case of a European patent, the decision applies to the territory of those Contracting Member States for which the European patent has effect (see also: Court of Appeal, decision dated 30 April 2025, UPC_CoA_768/2024 para. 124 et seq.). This is because if the product infringes the patent in suit, this is regularly the case in all UPC-States. It is precisely the outstanding advantage of the Unified Patent Court that courts have comprehensive cognizance. An exception is only made if certain circumstances justify this. It is possible that the Local Division Paris has assumed such an exception here because the claimant – despite an undisputedly existing distribution network – has limited itself to only one company in the European distribution group. However, there are no further considerations in this regard. Moreover, it appears to be the wrong starting point, as the claimant’s unsuccessful choice of the defendants would not have any binding effect on the other companies, but only the French company would no longer be allowed to distribute the products. For all other actual sales in the other countries applied for, the claimant would simply have had to file a new complaint. Against this background, an exception to Art. 34 UPCA does not appear to be expedient in this case.

The Local Division Paris based its decision on R. 13m RoP and R. 171.1 RoP. The claimant had failed to fulfil its burden of demonstration and proof because it had not set out the acts of infringement separately for each UPC-State. However, such an interpretation of the rules of evidence contradicts the principle outlined above. This is all the more true as the defendant has not disputed the acts of infringement for the other states. It would therefore have been more stringent and also more economical in terms of procedure if the Local Division had granted injunctive relief for all the states applied for and resolved the obvious problem of the wrong choice of defendant via the inter partes effect of the judgement.

Dr Melissa Lutz

Twice the Impact – Kather Augenstein wins big at the Managing IP EMEA Awards 2025

Kather Augenstein was honoured with two awards at the 20th Managing IP EMEA Awards 2025 in London – “Impact Case of the Year Europe – Panasonic v OPPO (2024)” and “Impact Case of the Year Europe – Mammut Sports Group v Ortovox Sportartikel (2024)” – reaffirming its position as one of the leading law firms in European IP law.

Miriam Kiefer LL.M., Managing Partner at Kather Augenstein, comments on the awards: “With our outstanding team, we successfully led the landmark case Panasonic v OPPO before the Unified Patent Court (UPC). Having succeeded for Panasonic with the first SEP/FRAND case before the UPC is a significant milestone – for our boutique law firm as well as for European patent law in general. We also made history with Ortovox v Mammut. For Ortovox we obtained the first ex-parte preliminary injunction before the UPC, which was confirmed on appeal. These successes confirm our position as one of the leading law firms before the UPC.”

Receiving these awards is a meaningful recognition of our work and commitment. We sincerely thank our clients, peers and everyone who supports us.

Each year, the Managing IP EMEA Awards recognise those in-house teams, law firms and attorneys who are largely responsible for the most innovative and challenging IP work in the past year, as well as those who are driving the international market forward.

Background on the two cases:

On November 22, 2024, the Mannheim Local Division of the Unified Patent Court (UPC) issued a landmark decision in Panasonic v. Oppo, addressing alleged infringement of a 4G Standard Essential Patent (SEP), see .This was the UPC’s first comprehensive ruling on FRAND licensing obligations under European patent and competition law, setting a key precedent for future SEP cases. In its Panasonic campaign, Kather Augenstein cooperated with patent attorneys of rcp patent and Colonia Patent.

Ortovox has won its case at the UPC Court of Appeal, which upheld a sales ban on Mammut’s avalanche rescue devices in Austria and Germany, see. This marks the first time a company has successfully enforced a preliminary injunction (PI) at both UPC instances for Ortovox. Kather Augenstein cooperated with Hofstetter Schurack patent attorneys.

Further background information about Managing IP Awards can be found here.

Jurisdiction of the European courts in cross-border patent infringements – ECJ BSH v Electrolux

Another landmark decision by the ECJ on the international jurisdiction of the courts of the EU member states is causing a huge stir as of late. On 25 February 2020, the ECJ published its long-awaited decision in the case BSH Hausgeräte vs Electrolux (C-339/22).

Background and questions referred

The starting point for the request for a preliminary ruling to the ECJ is a patent infringement case in Sweden. In 2020, BSH Hausgeräte GmbH filed a complaint there against Electrolux AB for infringement of all national elements of a European patent. The patent in suit was validated in Germany, Greece, Spain, France, Italy, the Netherlands, Austria, Sweden, the United Kingdom and Turkey.

Elektrolux objected to the admissibility of the complaint relating to infringement of the national parts, with the exception of the Swedish one. The core of the complaint was the objection that the non-Swedish patents were invalid and that the Swedish court therefore had no jurisdiction to rule on the infringement.

At the end of 2020, the court declared that it lacked jurisdiction for all non-Swedish patents on the basis of Art. 24 No. 4 Brussels Ia Regulation. BSH then filed an appeal against this. The Court of Appeal itself also bared doubts concerning the jurisdiction of the Swedish courts especially in light of the exception in Art. 24 No. 4 Brussels Ia Regulation.

Art. 24 No. 4 Brussels Ia Regulation provides an exception to the principle of the jurisdiction of the courts of the Defendant’s state of domicile (Art. 4 Brussels Ia Regulation). It stipulates that, the courts of the member state for which the European patent was granted have exclusive jurisdiction for proceedings “concerned with the […] validity of patents […]” irrespective of domicile. According to the further wording of the regulation, this jurisdiction applies “irrespective of whether the issue is raised by way of an action or as a defence”.

Based upon this background, the Swedish court of appeal stayed the proceedings and referred three questions to the ECJ for a preliminary ruling (summarised by the author).

1. Does a national court which has jurisdiction under Article 4 para. 1 Brussels Ia Regulation lose its jurisdiction to rule on the infringement action if the defence of invalidity of the patent in suit is raised or does the court merely lack jurisdiction to rule on the defence itself?

2. Does Art. 24 No. 4 Brussels Ia Regulation apply to third countries (non-EU)?

3. Can a national regulation affect the interpretation of Art. 24 No. 4 Brussels Ia Regulation?

The answers to questions 1 and 2 are likely to be highly relevant for patent infringement proceedings in the EU.

The decision

Assertion of a patent granted in another EU Member State

The ECJ first deals with the constellation in which the Claimant asserts a different national part of a European patent before the court of the Defendant’s EU domicile and the Defendant raises the defence of invalidity.

The jurisdiction of the court of domicile is based on Art. 4 para. 1 Brussels Ia Regulation, which, however, only establishes jurisdiction subject to the other provisions.

According to Art. 24 No. 4 Brussels Ia Regulation, the courts of the Member State that granted the patent have exclusive jurisdiction to decide on an attack of the validity of the patent, irrespective of whether such an attack is raised by way of an action or as a defence (codification ECJ GAT v LuK, C-4/03).

It follows from the GAT case law that a court dealing with proceedings for infringement of a patent granted by another Member State, in the context of which the validity of the patent is attacked, is not allowed to declare the invalidity of the patent incidentally. It must find that it has no jurisdiction over the question of the validity of the patent.

In addition, the ECJ now had to clarify whether the court of the Defendant’s domicile retains its jurisdiction to decide on the patent infringement action under such circumstances, or whether it must declare to generally have no jurisdiction over the dispute.

This is the point where it becomes intriguing, because the ECJ states that the court of domicile does not lose its jurisdiction over the infringement action. The considerations of the Court are convincing. In addition to the principle that exceptions to principles should be interpreted narrowly, the exception would become the rule if interpreted otherwise. This is because in the majority of patent disputes, the Defendant attacks the validity of the patent in suit. The Defendant would then not only have it in its own hands to withdraw the court’s jurisdiction through its own defence strategy but could also decide when to do so. A duly seized court would then have to declare itself without jurisdiction due to an act of the Defendant. This would lead to the termination of the proceedings due to the lack of a referral option. However, the Brussels Ia Regulation is intended to guarantee legal certainty precisely through a high degree of predictability of the jurisdiction rules.

The ECJ goes on to point out the advantages of its interpretation: This enables owners of IP rights whose IP rights are infringed by the same Defendant in several Member States to bundle their claims and receive comprehensive compensation in a single place of jurisdiction. This also avoids the risk of conflicting decisions.

Anyone who may now think that the ECJ is depriving the Defendants of the defence to attack the validity needs to study the ECJ’s judgment further. This is because it explicitly states that the separation of infringement and validity does not mean that the infringement court must disregard the fact that the Defendant has duly filed an action for revocation in another Member State. If the court of domicile considers that there is a reasonable and non-negligible possibility that the patent will be declared invalid, it may stay the infringement proceedings.

Assertion of a patent granted in a third country

In addition, the ECJ had to decide on the jurisdiction of the court of domicile if the Claimant asserts a patent granted in a third country.

Firstly, the ECJ states that the Brussels Ia Regulation is an internal jurisdiction regulation of the EU. Art. 24 No. 4 Brussels Ia Regulation can therefore not apply nor assign jurisdiction to a court of a third country.

In the absence of special provisions, the jurisdiction to rule on the invalidity defence remains with the court of domicile in accordance with Art. 4 I Brussels Ia Regulation. The Lugano Convention (Norway, Iceland, Switzerland), for example, contains a provision corresponding to Art. 24 No. 4 Brussels Ia Regulation. Bilateral agreements with other third countries may also play a role. If such agreements do not exist, as in the case of Turkey, Art. 33 and Art. 34 Brussels Ia Regulation must also be observed.

Furthermore, the jurisdiction to rule on the invalidity defence remains with the court of domicile according to the ECJ’s decision. According to the ECJ’s findings, this does not violate the principle of non-interference under international law (a state may not interfere in matters that essentially fall within the national jurisdiction of another state). This is because the decision on the validity in the context of a defence in infringement proceedings does not formally have any effect on the actual existence or content of the patent in the third state. According to the ECJ, such a decision only has inter partes effects, as the defence is only aimed at obtaining the dismissal of the complaint and not the revocation of the patent.

Practical effects

As tempting as it may sound to proclaim the simple bundling of all infringement claims before one court, the devil is in the detail.

Firstly, a suitable Defendant is required that is domiciled in the appropriate EU Member State. This Defendant may now be accused of all acts of infringement within and outside the EU. However, they must be acts of infringement by this Defendant. The details of the group structure and the organisation of the distribution chain are of importance here.

Once such a Defendant has been found, the court of domicile can be asked to rule on the patent infringements in several countries. Whether such an action on the Claimant’s side will be successful depends on the Claimant’s own preparation and the reaction of the Defendant. In addition to the presentation of the acts of infringement, the assessment of the infringement and the validity is governed by law of the state for which protection is sought (Art. 8 para. 1 Rome II Regulation). The Claimant must therefore present the infringement in accordance with the law of the granting state and, if necessary, provide evidence in this regard.

Claimants who wish to make use of the ECJ’s new case law must therefore overcome several hurdles, which may incur a heftier or lesser workload. As such it is still necessary to examine very carefully whether the expected effort and the possible delays in infringement proceedings correspond to the interest and economic expectations of the infringement proceedings.

Finally, these principles must now be transferred to the UPC. According to Art. 3 UPCA, the UPCA applies to all EPs with unitary effect and all EPs for which no opt-out has been declared. In this respect, the scope of these IP rights is limited to the contracting member states of the UPCA. These are in turn divided into EU and non-EU states. The court will then proceed as described above. In this respect, the Local Division Düsseldorf has already anticipated the decision of the ECJ in its decision Fujifilm vs Kodak (judgement 28.01.2025, CFI_355/2923) and correctly declared itself competent to decide on the UK part of an EP. However, due to doubts about the legal status of the case, the infringement was no longer relevant (for more on this, see the blog article by my colleague Carsten Plaga).

Dr Katharina Brandt

Chambers Global Guide – Kather Augenstein achieves Band 2 in Chambers Global Ranking 2025

We are excited to share that Kather Augenstein has been ranked in Band 2 for Patent Litigation in the latest Chambers Global 2025 Rankings.

What the team is known for:

Strength:

We are also proud that three of our partners have earned individual rankings.

• Dr Peter Kather – Senior Statespeople
• Dr Christof Augenstein – Band 2
• Miriam Kiefer LL.M. – Band 4

“Long arm jurisdiction” before the UPC: Local Division Düsseldorf affirms its juristiction for the British part of a European patent

Local Division Düsseldorf, Decision dated 28 January.2025, Fujifilm v Kodak (UPC_CFI_355/2023)

On January 28, 2025, the Düsseldorf Local Division of the Unified Patent Court (UPC) decided on the jurisdiction for a complaint regarding the British part of a European patent in the case UPC_CFI_355/2023. This decision raises significant questions regarding the international jurisdiction of the UPC and its scope with regard to non-UPC member states such as the United Kingdom.

I. Facts of the case

In the underlying complaint, the Claimant asserted patent infringement and sought, among other things, injunctive relief and damages for acts in Germany and the United Kingdom. The Defendants raised a plea of lack of juristiction of the UPC with respect to the UK part of the EP, in particular arguing that Art. 34 UPCA limits the jurisdiction of the UPC to the Contracting States of the UPC. Furthermore, reference was made to the exclusive jurisdiction of British courts under international principles of patent law.

The Defendants filed a counterclaim for revocation of the patent in suit and applied for the patent in suit to be declared invalid in all the Contracting States in which the patent in suit is valid. The Defendants did not file an explicit application for the patent in suit to be declared invalid in the United Kingdom as well.

II. Decision and grounds

The Düsseldorf Local Division affirmed the UPC’s juristiction for the British part of the patent in suit.

The Local Division in Düsseldorf has international jurisdiction under Article 4 of the Brussels I Regulation because all the Defendants are domiciled in Germany. Since the jurisdiction is based on the domicile and not on the actions of the Defendants, the Local Division has also assumed international jurisdiction for actions in third countries. Furthermore, the decision states that Art. 71b of the Brussels I Regulation governs the UPC’s juristiction and expressly includes disputes arising under European patents, even if they relate to non-contracting states. This means that the regulation is not territorially limited to the contracting states. Furthermore, Art. 34 UPCA does not contain any restrictions to the effect that a decision regarding the British part of a European patent is excluded. Art. 34 UPCA would rather only regulate the case if the EP is not validated in the entire territory of the UPC. Art. 34 UPCA does not, however, contain any regulation regarding European patents that are validated outside the territory of the UPC.

Further the Düsseldorf Local Division also dismissed the complaint with regard to the British part of the patent in suit. The court came to the conclusion that one of the grounds for invalidity put forward by the claimant applied and, on the basis of the counterclaim for revocation, declared the German part of the patent in suit to be invalid. In view of this, the court did not issue a decision against the Defendants under the British part of the patent, because the validity of the patent in suit was a prerequisite for the conviction of the Defendants. It was not apparent that the question of validity under British law should be assessed differently.

Subseqeuntly there was no decision on whether the court would have had juristiction over a possible counterclaim for revocation of the British part of the patent in suit, since the Defendants did not extend the counterclaim for revocation to the British part.

The decision emphasizes that the UPC is intended to enable uniform law enforcement, which corresponds to the objective of the UPCA. This applies even if the patent in question is registered in a non-UPC state such as the United Kingdom.

III. In Conclusion

The decision of the Düsseldorf Local Division provides important clarifications regarding the UPC’s juristiction in cases concerning non-contracting states. It strengthens the position of the Unified Patent Court as the central forum for the enforcement of European patents. In terms of its content, the Düsseldorf Local Division follows the principles applied by the national courts in Germany.

Insofar the decision of the Düsseldorf Local Division is correct in any case as the Defendants were not ordered to pay damages under the British part. The infringement of the British part was to be assessed under British law. Under UK law, the Defendants would have been entitled to raise the objection of invalidity. Since the Court declared the German part of the patent in suit tob be invalid and no differences in the validity assessment under UK law were evident, a conviction on this basis was ruled out.

From a strategic point of view, it may therefore be advisable in the future, depending on the individual case, to also assert the British part of a European patent before the UPC. However, it is unclear how the UPC will assess the infringement of a European patent under British law and how this will affect the proceedings and, in particular, the duration of the proceedings. It also remains to be seen whether other Local Divisions or the Court of Appeal will follow this decision.

Carsten Plaga