Update on the article “BSH as a Gateway to Cross-Border Patent Enforcement: The Regeneron/Bayer vs Formycon and Onesta vs BMW Cases” from December 1, 2025

The CJEU’s decision in BSH v Electrolux (C-339/22) has by now been expressly taken up in several decisions of the UPC, in particular with regard to the question whether, where jurisdiction is based on the defendant’s domicile, the UPC may also rule on alleged infringements relating to non-UPCA validations of a European patent, for example in Spain, the United Kingdom or Switzerland.

An early and frequently cited reference can be found in the order of the Milan Local Division of 8 April 2025 in Alpinestars v Dainese, in which the court adopted the CJEU’s reasoning and considered the UPC’s jurisdiction as a court of a Member State within the meaning of the Brussels Ia framework also with respect to non-UPCA validations. In a comparable manner, the Paris Local Division in IMC Créations v Mul-T-Lock examined and affirmed jurisdiction also with regard to the Spanish, UK and Swiss parts of the bundle patent, based on EU jurisdictional principles.
The practical reach of the BSH approach became particularly visible in interim relief proceedings in Dyson v Dreame (Hamburg Local Division, 14 August 2025), where the injunction order also covered Spain. At the same time, these decisions show that the UPC does not apply an automatic or schematic extension of jurisdiction, but regularly requires a concrete and at least plausible factual submission concerning the alleged infringing acts in the respective third state.
The treatment of validity challenges outside the UPC territory is, so far, handled differently and on a case-by-case basis. Academic commentary discusses in this context whether, and to what extent, such challenges should be addressed at the jurisdictional stage or only at the level of the merits.

In Onesta v BMW before the Munich Regional Court I, infringement of, inter alia, US patents is asserted. The jurisdictional argumentation draws on considerations that have gained prominence in the European context through BSH, but transfers them to a setting involving third-state patents outside Europe.

On the US side, Judge Alan Albright (W.D. Texas) issued an ex parte Temporary Restraining Order (TRO) on 16 December 2025, which was subsequently extended and, on 13 January 2026, converted into an Anti-Suit Injunction (ASI) in favour of BMW. The purpose of these measures was to prevent the continuation of the German proceedings insofar as they concern the US patents. Appeals were lodged against the ASI, and the Federal Circuit granted interim relief, leaving the procedural situation open for the time being.

Conclusion

UPC case law now shows an identifiable tendency to rely on BSH as a viable basis for extended international jurisdiction, including with respect to non-UPCA validations of European patents. However, the contours of this approach will continue to be shaped, in particular by the treatment of validity challenges and by constellations involving third-state patents. Onesta v BMW further illustrates that extending such jurisdictional reasoning to third-state patents entails significant conflict potential with foreign procedural instruments and brings issues of international procedural coordination increasingly to the fore.