ALPINESTARS RESEARCH v Dainese (CFI, 15 April 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 15 April 2025 (UPC_CFI_472/2024, ORD_58591/2024), Judge-rapporteur Zana of the Milan Local Division dismissed the preliminary objection of Alpinestars Research, Defendant 2 in the infringement action on EP 4 072 364 brought by Dainese against six defendants. Costs were reserved to the main proceedings. The division accepted jurisdiction over infringement of the Spanish validation of the patent, Spain not participating in the UPC, applying the CJEU judgment of 25 February 2025 (C-339/22).

Question

May the local division of the domicile of a defendant established in Italy hear a claim for infringement of the Spanish part of a European patent, and which objections fall within Rule 19?

Decision

The list in Rule 19.1 is exhaustive: the alleged inadmissibility, which falls outside it, belongs to the merits (paragraph 9). The UPC is a court of a Member State within Art. 71a of Regulation No 1215/2012 (paragraph 11). According to the CJEU, the court of the defendant’s domicile retains jurisdiction over infringement of a foreign patent even where validity is challenged by way of defence, only validity being reserved to the State of grant. Art. 71b covers European patents without confining them to Contracting States, and Art. 34 UPCA does not govern validations outside the UPC territory. Order UPC_CoA_388/2024 on Ireland was distinguished (paragraph 12). Milan’s jurisdiction over a defendant domiciled in Italy is therefore universal (paragraphs 13 to 15), no revocation action having been brought against the Spanish validation. The request to extend the time for the defence cannot be made in a preliminary objection (paragraph 16).

Key points for practice

• Practical point: suing in the division of the defendant’s domicile allows infringement of non-UPC validations, such as Spain, to be added, validity remaining a matter for the national court.

Provisions applied

Agreement on a Unified Patent Court

Arts 31, 32 and 34

Rules of Procedure

Rules 19.1, 19.6 and 20.1

Regulation (EU) No 1215/2012

Arts 4(1), 7, 24(4), 71a and 71b

Case law cited

CJEU, Grand Chamber, 25 February 2025, C-339/22, FUJIFILM v Kodak, Düsseldorf Local Division, 28 January 2025, Mul-T-Lock France v IMC Créations, Paris Local Division, 21 March 2025, Court of Appeal, UPC_CoA_388/2024, Court of Appeal, 2 September 2024 (UPC_CFI_471/2023)

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.