Cross-border patent litigation and the UPC’s expanding reach: implications for Ireland

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Date

30/09/2026

The Unified Patent Court’s reach beyond its contracting member states is no longer a theoretical question. It is emerging as a key battleground in European patent litigation, with significant implications for pan-European enforcement strategies.

Although Ireland signed the Agreement on the Unified Patent Court (“UPC“) in 2013, it has not ratified it and, as such, is not currently a participating country (a “Contracting Member State”). Nevertheless, recent decisions demonstrate that the UPC’s jurisdiction may extend beyond the territorial boundaries of the UPC system. These developments have important implications for patent owners and businesses operating in non-UPC countries, including Ireland, as well as for businesses based outside of the EU with local representatives based in the EU for regulatory purposes.

The following are the UPC decisions and questions referred to the Court of Justice of the European Union (“CJEU”) that are shaping the extent and limits of the jurisdiction of the UPC.

CJEU reshapes patent litigation – BSH v Electrolux^[1]

In February 2025, the CJEU in BSH v Electrolux clarified the jurisdictional framework for cross-border patent litigation in the European Union, holding that:

an EU Member State court has jurisdiction under Article 4(1) of Regulation (EU) No 1215/2012 (“Brussels I Recast Regulation”) over a defendant domiciled in that Member State to hear an action alleging infringement of a patent granted in another Member State;
such a court does not lose that jurisdiction merely because the defendant challenges the validity of that patent;
an EU Member State court has the option to stay the proceedings if there is a “reasonable, non-negligible possibility” that the patent might be invalidated by the third state court that has jurisdiction to determine validity;
Article 24(4) of the Brussels I Recast Regulation, which grants the courts of the state of registration of a patent exclusive jurisdiction over issues concerning its registration or validity only, does not apply to a court of a third state; and
an EU Member State court hearing an infringement claim under Article 4(1) of the Brussels I Recast Regulation may therefore consider a challenge to the validity of a patent granted or validated in a non-EU country. However, its decision has effect only between the parties and cannot invalidate or otherwise alter the patent or the national patent register in that non-EU country.

Early decision referencing Ireland – Abbott v SiBio^[2]

Also in February 2025, the UPC Court of Appeal in Abbott v SiBio considered the UPC’s ability to grant provisional measures that would have effect in Ireland.

The Hague Local Division had initially granted a preliminary injunction covering all UPC Contracting Member States in which the patent was in force. The court refused to allow Abbott’s request to extend its claim, on appeal, to provisional measures covering Ireland, since Ireland is not a Contracting Member State. The decision arose in unusual procedural circumstances and is not regarded as providing significant guidance on the scope of UPC jurisdiction. Nevertheless, it is referenced here given it is one of the earliest UPC decisions to consider whether provisional measures could extend to Ireland.

Can anchor defendants act as a gateway to UPC jurisdiction – Genevant v Moderna^[3]

Genevant v Moderna followed shortly afterwards in May 2025 – a case concerning supply of the Spikevax vaccine for Covid-19. The UPC accepted jurisdiction over non-UPC defendants (Moderna Spain & Poland) under Article 8(1) Brussels I Recast Regulation and non-EU defendant (Moderna Norway) under Article 7(1) Lugano Convention, by relying on each defendant’s own alleged joint infringement with an “anchor defendant” domiciled in a UPC Member State – the so called “spider in the web”, Moderna Netherlands. The Hague Local Division found that Genevant had sufficiently substantiated that the Spanish, Polish and Norwegian Moderna entities had allegedly infringed the patent in their respective countries jointly with Moderna Netherlands. In the court’s view, Moderna Netherlands successfully offered to supply and had sold Spikevax in multiple European countries, including Norway.

Moderna’s final argument concerned the territorial reach of the UPC’s jurisdiction. While the court found that jurisdiction had been established in respect of all defendants, either because the objections were dismissed or because jurisdiction had not been challenged in time, Moderna argued that any such jurisdiction over certain defendants should be limited territorially and should not extend beyond the jurisdiction of the UPC. The court held that this was not a matter for determination at the preliminary stage and deferred the issue to the main proceedings. However, the proceedings subsequently settled in March 2026, meaning the question of the UPC’s extraterritorial jurisdiction was never ultimately resolved.

Fujifilm v Kodak – can the UPC decide infringement of UK (or other non-UPC/EU) designation of an European Patent?

In Fujifilm v Kodak^[4], the UPC’s Mannheim Local Division dealt with the German and UK designations of a European Patent (“EP”) in two separate decisions: in its decision of 2 April 2025, it held the German designation of the patent to be valid and infringed, and separately, in its decision of 18 July 2025, it confirmed its “long-arm” jurisdiction over the UK designation, a decision with significant implications for the UK.

Fujifilm sued German Kodak entities for infringement of EPs validated in Germany and the UK. Rejecting Kodak’s jurisdiction and validity challenges, the court held across the two decisions that both the German and UK designations were infringed and granted injunctions covering both territories. Kodak appealed both decisions.

Almost a year later, in June 2026, the UPC Court of Appeal delivered its first detailed decision^[5] establishing a framework for when the UPC will accept jurisdiction and when it will exercise extra-territorial jurisdiction. The Court of Appeal confirmed the UPC’s jurisdiction to decide upon the infringement of the UK part of an EP but ultimately found no infringement of the UK designation under UK law.

In particular, the following principles were established:

International jurisdiction

Article 34 UPCA does not confine the UPC’s jurisdiction to its own territory. Rather, it provides that UPC decisions shall, as a rule, cover all Contracting Member States where an EP has effect. EPs validated outside UPC territory remain a “matter governed by the UPCA”, and Article 24(3) UPCA expressly contemplates the application of non-contracting states’ national law.
The UPC is treated as a “common court” under Article 71a of the Brussels I Recast Regulation, so it may exercise the same jurisdiction as the national courts of its Contracting Member States.
Where a defendant is domiciled in UPC territory, the UPC has jurisdiction under Article 4 Brussels I Recast Regulation and cannot decline it on the grounds that a court of a non-Member State would be a more appropriate forum for the trial of the action.
The UPC accepting such jurisdiction is not contrary to the Agreement on Trade-Related Aspects of Intellectual Property Rights (the “TRIPS Agreement”).

Exercising jurisdiction

A court exercising jurisdiction over an alleged infringement of a patent validated outside its own territory must not only apply the law applicable to that patent, but must also apply international law principles such as judicial comity, under which a court exercising extra-territorial jurisdiction must show appropriate deference to the laws and courts of the state where the patent is registered.
Where the UPC has jurisdiction over an infringement action based on a non-UPC designation of an EP, and the defendant raises invalidity as a defence, a key distinction was drawn between:

1. EU/Lugano Convention designations (“EU/LC EPs”) – where, under Article 24(4) Brussels I Recast Regulation and Article 22(4) of the Lugano Convention, the UPC cannot consider the validity of such patents but does not lose jurisdiction over the infringement action itself; and
2. Non-EU/non-LC designations (“Non EU/LC EPs”) – where the UPC can consider the validity of such patents on an inter partes basis and decide the infringement action accordingly.

The UPC Court of Appeal set out a structured framework for three scenarios:

Situation I — Stand-alone revocation action filed with the UPC with respect to EU/LC EPs and/or non-EU/LC EPs

- The UPC must declare that it lacks jurisdiction to decide the revocation action.

Situation II — Infringement action based on EU/LC EPs and/or non-EU/LC EPs, and the patent in force in the UPC territory is considered invalid, but the attacked embodiment or process would infringe if it were valid

- EU/LC EPs and/or non-EU/LC EP(s) – the UPC will first offer the patentee the opportunity to withdraw the infringement action insofar as it is based on the extra-territorial EPs.
- EU/LC EPs – if the patentee does not withdraw, the defendant is given time to file a revocation action in the competent national court. If such an action is pending, the UPC has discretion to stay the infringement proceedings until the national court renders a final decision. If the defendant does not file a revocation action within the given period, the UPC assumes the patent is valid and decides on that basis.
- Non-EU/LC EPs – if the patentee does not withdraw, the infringement action is dismissed, unless there are specific reasons not to do so (eg, because the claims of an extra-territorial patent differ and may be considered valid – see situation III).

Situation III — Infringement action where the UPC-territory patent is found valid and infringed

- Both EU/LC EPs or non-EU/LC EPs – the UPC may, where there is a reasonable, non-negligible possibility that the patent will be held valid by the competent national court, to avoid undue delay, issue a decision including orders ‘under a condition subsequent’ (ie, the orders stand provided the patent is not later held invalid by the competent national court in revocation proceedings).
- If the national court holds the patent valid, the decision is final and it and any related orders stay in place.
- If the national court holds the patent wholly or partially invalid, the condition is not fulfilled and the orders fall away.
- In the latter case, the patentee may request consequential orders from the UPC within two months, including a stay pending a final national decision.

Joint tortfeasorship

Relying on its earlier decision in Belkin v Philips, the Court of Appeal of the UPC reiterated that an “infringer” for the purposes of Articles 25 and 63 UPCA includes not only a direct infringer but also a party to whom another’s infringing acts are attributable as an accessory. Accordingly, the UPC’s jurisdiction under Article 32(1)(a) UPCA extends beyond claims against primary infringers and covers allegations of joint tortfeasorship.

Dyson v Dreame – testing the limits of the UPC’s reach

Dyson v Dreame is the first referral from the UPC to the CJEU. The referral was made in March 2026, before the UPC Court of Appeal’s decision in Fujifilm v Kodak, with four questions now before the CJEU. The CJEU’s answers will shape the UPC’s role as a pan-European enforcement forum.

Background

On 2 May 2025, Dyson lodged an application for provisional measures against four defendants including Dreame International (Hongkong) Limited (“Dreame”) (a Hong Kong entity) and Eurep GmbH (“Eurep”) (a German company designated as Dreame’s authorised EU representative under EU product safety and compliance regulations) with the UPC Hamburg Local Division. The application, among other things, sought an order prohibiting infringement of the patent in Contracting Member States and Spain (a non-UPC country) with Dyson arguing that some Dreame products infringed their patent.

At first instance^[6], the Local Division found infringement in relation to certain Dreame products and granted a preliminary injunction in all UPC Contracting Member States and Spain. The Local Division found it had jurisdiction over Eurep, Dreame’s European authorised representative, under Article 4(1) Brussels I Recast Regulation, as Eurep is domiciled in Germany. It also found that it had jurisdiction over Dreame to deal with the infringing activities in Spain under Article 8(1) Brussels I Recast Regulation (the UPC has international jurisdiction over joint defendants if one of them is domiciled in a UPC Contracting Member State (an ‘anchor defendant’) and the claims are so closely connected that it is necessary to hear them together to avoid irreconcilable judgments from separate proceedings).

Both Dyson and Dreame appealed against the Local Division’s order. Dyson argued that the preliminary injunction should apply to all Dreame products in their initial application, while Dreame argued that the preliminary injunction should be set aside in its entirety.

In its decision on 6 March 2026^[7], the UPC Court of Appeal extended the preliminary injunction to cover the additional Dreame products in UPC territories. However, it ordered the partial stay of the proceedings against Dreame to the extent that it related to the territory of Spain and the action against Eurep.

The UPC Court of Appeal referred four questions to the CJEU (which can be read in full here), critically asking if an EU authorised representative of a third state entity can act as an ‘anchor defendant’ and if that authorised representative can itself be a target for an injunction. The UPC also queried whether the UPC has jurisdiction to grant provisional measures for infringement in a non-UPC country where they offer products via an essentially identical website to where they are offered in UPC Contracting Member States.

Potential implications of the CJEU decision:

A finding that an EU authorised representative could be the target for an injunction could have significant practical consequences. In many product sectors, the appointment of an EU authorised representative is a regulatory prerequisite to placing products on the EU market. As a result, an injunction against an authorised representative could, as a practical matter, prevent a non-EU manufacturer from marketing the relevant products throughout the EU. Such a ruling would therefore provide patentees with a potentially powerful enforcement mechanism. It could also materially alter the risk profile of Irish authorised representatives, who could potentially face the prospect of becoming involved in patent disputes despite only performing a regulatory compliance role.

What does the UPC’s expanding jurisdiction mean for Irish businesses?

Patent holders and defendant group companies operating across European borders, including in Ireland, should take careful note of the guidance and nuanced procedural framework provided by the UPC Court of Appeal in Fujifilm v Kodak. The Dyson v. Dreame referral is potentially of even greater significance, particularity for EU authorised representatives.

In the life sciences sector, parallels may be drawn with marketing authorisation holders based in Ireland and the question of whether they could serve as a basis for UPC jurisdiction in infringement proceedings against defendants established outside the UPC system.

For further information or to discuss any of these matters further, please contact Charleen O’Keeffe or your usual Matheson contact.