Infringement claim amendment allowed to include non-UPC territories after CJEU Electrolux decision

The Unified Patent Court's (UPC) Munich local division (LD) in a recent ruling granted global agrichemical group Syngenta's request to include non-UPC territories in its infringement claim in light of the Court of Justice of the EU's (CJEU) decision on jurisdiction in BSH v Electrolux.

The Munich LD's decision in Syngenta v Sumi Agro followed the UPC Court of Appeal's decision in TGI Sport v AIM Sport in deciding that the claim amendment could not have been made at an earlier stage.

This means that requests to extend the scope of claims to include non-UPC states in light of Electrolux are likely to become commonplace, at least in the short term, and will be dealt with by the UPC on a case-by-case basis.

It will be interesting to see at what point the court decides that an amendment could have been made earlier given that the Electrolux decision was handed down just under three months ago at the end of February.

Syngenta's request

On the basis of Electrolux, Syngenta requested leave to amend its claim to include the territories of Poland, Czechia, and the UK at the end of March. The application was made quite late in the written procedure but Syngenta argued that it was only able to bring the request at this stage as prior to Electrolux it was generally believed that the court lacked jurisdiction over these territories.

Sumi Agro opposed the amendment, maintaining that Syngenta could have included the territories in its original claim with reasonable diligence in September 2024, especially considering Advocate General (AG) Emiliou's opinions in Electrolux, which were issued in February and September 2024 and which it said largely foreshadowed the CJEU's final decision.

Amendment allowed

The court permitted Syngenta's application to amend its claim, stating that the amendment could not have been made earlier with reasonable diligence, following the Court of Appeal's decision in AIM Sport.

As the Court of Appeal had held, the CJEU's former position on jurisdiction in GAT v Luk meant that Syngenta could not have included the non-UPC territories in its original statement of claim and, as AG Emiliou's opinions were not binding on the CJEU, there would have been too much legal uncertainty to rely on them, which would not have been a good basis for the UPC to make procedural decisions.

Leave to appeal to the Court of Appeal was not granted because of its previous decision, but the LD did extend the timetable for exchange of further written submissions even though it acknowledged that Sumi Agro would not be unduly hindered by the amendment. However, the dates for the interim conference and oral hearing were not extended.

Osborne Clarke comment

This decision is another example of the UPC applying the reasoning of the CJEU's decision in Electrolux. It highlights Electrolux's importance in shaping the jurisdictional boundaries of the UPC.

It confirms the court's willingness to allow the scope of claims to be amended to include non-UPC territories. The decision is likely to encourage other parties to seek similar amendments to claims and prompt new litigants to include non-UPC territories in their original claims. This will likely increase the complexity and scope of litigation at the UPC.

However, it remains to be seen how willing the UPC will be to continue to allow this type of amendment in the future and at what point it will determine that the amendment could have been made earlier with reasonable diligence.

The UPC has up to now adhered relatively strictly to its goal of delivering decisions on the merits within 12 months. It is, therefore, likely that the stage of the proceedings at which the amendment is requested and its potential impact on the timeline of the proceedings will be taken into consideration by the court when making decisions on a case-by-case basis – particularly as more time passes since the Electrolux decision.

Stefano Schahbasi, a trainee solicitor at Osborne Clarke, contributed to this Insight.