The Court of Appeal clarifies the scope of UPC’s long-arm jurisdiction

In its decision of 2 June 2026, the Court of Appeal of the UPC further clarified how “long-arm” jurisdiction must be construed where infringement claims are combined with validity challenges. The decision is important also for defendants because it shows that invalidity strategy in these cases depends fundamentally on whether the national validation at issue is in an EU or Lugano state, or in a non-EU state.

Two strategic points stand out for defendants:

1. A defendant should not ignore a UPC invitation to commence a national invalidity action where an EU or Lugano validation is concerned.
2. There is no one-size-fits-all invalidity strategy in long-arm cases: the available options differ significantly depending on whether the relevant national validation is in an EU or Lugano state, or in a non-EU state.

The decision also confirms, for the avoidance of doubt, that once long-arm jurisdiction is confirmed, the UPC has the same competence to rule on those national validations as a national court would have.

Analytical framework

Because the EPC extends beyond both the EU and the UPC territory, a European patent may have national validations that fall within UPC territory and others that fall outside it. For present purposes, the latter group must be divided into two categories: national validations in EU member states and national validations in non-EU states.

It must be noted that national validations in Lugano Convention states such as Switzerland, face the same limitations as EU-validations. To keep the discussion readable, this note therefore refers to EU and Lugano validations together unless a separate distinction is required.

No territorial restriction on the UPC’s competence in long-arm cases

Although this aspect was not unexpected, the Court of Appeal made clear that the UPCA contains no inherent territorial limitation on the cases the UPC may decide once long-arm jurisdiction is confirmed. In other words, where the applicable jurisdictional rules open the door to extra-territorial adjudication, the UPC is competent to determine those claims to the same extent as a national court.

The Court of Appeal found no indication that the Contracting Member States of the UPC intended, through the UPCA, to confer a narrower jurisdiction on the UPC than that exercised by national courts in comparable circumstances. On the contrary, Article 71a of the Brussels Recast Regulation supports treating the UPC as a national court for these purposes. The practical consequence is that the UPC’s competence in extra-territorial cases mirrors that of a national court.

The interplay of infringement and invalidity in long-arm jurisdiction cases

The central difficulty in long-arm cases is the relationship between infringement and validity. The Court of Appeal’s analysis builds on the CJEU’s judgment in BSH v Electrolux, which drew a fundamental distinction between EU and Lugano validations, on the one hand, and non-EU validations, on the other.

• For an EU or Lugano validation, validity must be challenged through a national invalidity action before the competent national court. An invalidity objection raised only in the (UPC) infringement proceedings is not sufficient.
• For a non-EU validation, invalidity may in principle be raised as an inter partes defence in the infringement action itself. That defence may affect the outcome in the infringement case, but it cannot produce a formal revocation of the relevant national validation.

Practical consequence

A defendant cannot avoid a national invalidity action if it wishes to rely on invalidity of an EU or Lugano validation in parallel UPC infringement proceedings. For non-EU validations, by contrast, invalidity may be raised directly in the infringement case, although only as a defence and not as a route to formal revocation.

How the UPC applies this framework in practice

The Court of Appeal’s guidance can be understood most clearly by separating two scenarios.

Scenario 1: The UPC finds the UPC-designated part of the patent invalid

The UPC should first give the patent proprietor an opportunity to withdraw the action insofar as it concerns non-UPC validations. If the proprietor does not do so, the treatment of those validations depends on the territory concerned.

For EU and Lugano validations, the UPC will stay the infringement proceedings if a national invalidity action has been brought. If no such action is pending, the defendant may be invited to commence one. If the defendant does not do so, the UPC may proceed on the basis that the relevant national portion is valid and decide infringement accordingly, even though the UPC-designated part has been found invalid.

For non-EU validations, the UPC may dismiss the infringement claim assuming that the invalidity reasoning applied to the UPC-designated part also applies to the non-EU validation, unless the patent proprietor demonstrates a material difference.

Scenario 2: The UPC finds the UPC-designated part of the patent valid

In that situation, the UPC may proceed on the basis that there is a reasonable, non-negligible likelihood that the corresponding national validation will ultimately be upheld in any national invalidity proceedings.

On that basis, the UPC may grant injunctive relief subject to the condition that validity of the national validation is ultimately confirmed by the competent national court. If validity is confirmed, the decision becomes effective on a permanent basis.

If the national court instead finds the national portion invalid, the condition is not met and the injunction falls away. The patent proprietor may, however, ask the UPC to stay the infringement proceedings pending a final national validity decision.

Conclusion

The Court of Appeal’s decision confirms a marked asymmetry between EU and Lugano validations, on the one hand, and non-EU validations, on the other. For EU and Lugano validations, a defendant that wishes to rely on invalidity must be prepared to commence a national invalidity action; otherwise, an injunction might be handed down based on the EU validation even in cases where the UPC part was found invalid.

By contrast, for non-EU validations, invalidity can in principle be raised as a defence in the infringement action itself, even though that cannot result in a formal revocation of the national validation.

This distinction means that challenging the validity of a non-EU validation is generally less burdensome than challenging an EU or Lugano validation, both in terms of cost and case management. From a strategic perspective, however, the validity assessment of the UPC-designated part remains central in either scenario, because it is likely to shape the court’s approach to the corresponding long-arm validation regardless of whether that validation is in an EU, Lugano, or non-EU state.