Long arm not available for amended patent

IMC Créations v. Mul-T-Lock

UPC_CFI_702/2024 (Paris LD), decision of 16 January 2026 ⁽¹⁾

IMC Créations is a French company specialising in anti-theft systems for vehicles, particularly commercial vehicles. Among other things, it sells locks for the side and rear doors of commercial vehicles. Mul-T-Lock belongs to the Assa Abloy group and specialises in high security locking and access control systems, in particular pick-resistant keys and locks. IMC alleged that Mul-T-Lock’s MPV 1000 padlock infringes its unitary patent EP4153830 and the corresponding Swiss national validation.  

During the proceedings, IMC unconditionally amended the patent, limiting it for the purposes of the unitary effect. This amendment played a decisive role in the court’s analysis of whether IMC could rely on the amended patent to seek an injunction in Switzerland, a non UPC-country.

Relevant facts for long-arm jurisdiction and extraterritorial-injunctions

IMC explicitly sought a permanent injunction covering both France (UPC territory) and Switzerland, and argued that the UPC had jurisdiction to adjudicate infringement of the Swiss national part of the patent. It relied on the similarity of provisions between the Lugano Convention and Brussels I Regulation and pointed to other UPC decisions suggesting the possibility of effects beyond UPC Member States.  

Mul-T-Lock contested the UPC’s ability to rule on Swiss infringement, arguing first that infringement under Swiss national law had not been properly pleaded, and second that the UPC cannot rule on the validity of a national patent right outside UPC territory. According to the defendant, an injunction cannot be granted where the validity of the national part is in doubt, especially because IMC’s amendment implicitly acknowledged invalidity of the patent as originally granted.  

The court’s reasoning on long-arm jurisdiction and the effect of patent amendment

The court held that it does not have jurisdiction to rule on the validity of a national part of a patent granted by a non-UPC state, citing the CJEU decision BSH-Electrolux (C-339/22). While the UPC can hear infringement actions relating to national parts of patents from states bound by the Lugano Convention, this is subject to a critical limitation: the UPC must refuse or stay its assessment where there is a serious risk that the national part will be revoked by the court of the state of grant.  

Here, the court found that IMC’s unconditional amendment of the unitary patent created a “significant reasonable risk of invalidity” of the national (Swiss) part in its original granted form. By limiting the patent within the UPC proceedings to overcome inventive-step objections, IMC implicitly acknowledged deficiencies in the granted version. Because the Swiss part remained in its granted form (the amendment applied only to the unitary patent), the court concluded that there was a serious risk that the Swiss courts could revoke the unamended Swiss designation.

Consequently, the UPC declined to assess infringement in Switzerland and dismissed all claims based on the Swiss national part.

Whether an amended patent can support an injunction outside UPC territory

While the present decision was given in the context of unconditional amendment of a unitary patent, the logic can be applied consistently to conditional amendments and those made to classic EPs. In particular: amendments made during UPC proceedings apply only in countries within UPC territory, the national parts in non UPC states remain as granted, and if the amendment was made to overcome a serious challenge to the patent’s validity, there is a serious risk of invalidity of the national part.  

Following the Paris LD’s logic, the UPC must decline jurisdiction over patents in non-UPC states when the patent is amended to address validity issues.

Indeed, in the decision, the court emphasised that territorial limits imposed by the UPCA prevent extension of remedies beyond UPC territory unless the court can validly rule on infringement of national rights. Since it could not do so here, all cross-border injunction requests were refused.

Conclusions

This decision is a first instance decision and while consistent with discussion in earlier decisions of the Paris LD ⁽²⁾, it is at odds with the practice of other divisions where remedies have been granted in non-UPC states despite amendment of the patent during the UPC proceedings ⁽³⁾. Clarity from the Court of Appeal on this issued is needed urgently.

In the meantime, this decision represents a cooling off of the hype around the UPC and long arm jurisdiction.

1. https://www.unifiedpatentcourt.org/en/node/160179
2. See e.g. UPC_CFI_163/2024 (Paris LD), decision of 23 May 2025, paragraph 130.
3. See e.g. UPC_CFI_365/2023 (Mannheim LD), decision of 18 July 2025, in which remedies were granted covering the UK despite the corresponding German national validation being amended during the UPC proceedings.