Unified Patent Court's Milan Local Division confirms its jurisdiction over cross-border patent infringement claim
Published on 15th April 2025
UPC applies landmark CJEU ruling again, affirming its ability to adjudicate infringement claims relating to non-UPC European Patents
In a recent ruling in Dainese v Alpinestars, the Milan Local Division (LD) of the Unified Patent Court (UPC) has affirmed its jurisdiction to adjudicate on patent infringement claims involving European Patents, including those validated in non-UPC countries such as Spain.
This judgment builds on the Paris Local Division's decision in IMC Créations v Mul-T-Lock, which applied and extended the Court of Justice of the EU's (CJEU) decision in BSH v Electrolux and confirmed the UPC as a venue for cross-border litigation in Europe and beyond.
Non-UPC patents
The present case involved Dainese, the claimant, who brought an action against Alpinestars and other defendants, alleging infringement of a European Patent validated in various UPC territories and a non-UPC territory, Spain.
Alpinestars, which is domiciled in Italy, filed a preliminary objection challenging the UPC's jurisdiction to decide on the alleged infringement of the Spanish designation.
Applying the recast Brussels Regulation and the CJEU's interpretation of it in BSH v Electrolux, the Milan LD confirmed that it has jurisdiction to adjudicate on infringement issues relating to European Patents validated in non-UPC countries (in this case, the Spanish designation) when the defendant is domiciled in a UPC member state.
Interestingly, the Milan LD stated that this principle had already been established by the UPC prior to the CJEU's decision in BSH v Electrolux by virtue of the Düsseldorf LD's decision in Fujifilm v Kodak, which concerned a challenge to the UPC's jurisdiction over infringement claims relating to the UK designation of a European Patent.
Osborne Clarke comment
The Milan LD's ruling asserts the court's long-arm jurisdiction and underscores the UPC's role as a venue for adjudicating cross-border patent infringement disputes.
In this case, the Milan LD acknowledged that neither a revocation action nor a dispute concerning the registration or validity of the patent had been introduced with respect to the non-UPC Spanish designation. It will be interesting to see how the UPC deals with this situation in the future and whether it would be inclined to grant a stay in infringement proceedings concerning EU designations, or whether this is more likely in cases involving designations from third states.
The CJEU's judgment in BSH v Electrolux gives courts discretion to stay infringement proceedings in intra-EU situations where there is a "reasonable, non-negligible chance" that the patent will be held invalid, but similar wording was not included in the CJEU judgment with respect to third state situations. How the UPC deals with this situation remains to be seen.
This area of law is evolving rapidly, and further decisions are anticipated as parties explore the boundaries of the CJEU's decision. Watch this space!
