Background
Fujifilm obtained an injunction from the Mannheim Local Division of the Unified Patent Court against Kodak for infringement of EP 3 511 174, relating to printing plate technology. The injunction covered both Germany and the United Kingdom—notable because the UK is not a UPC member state following Brexit. Kodak appealed, challenging both the UPC’s jurisdiction to reach infringement occurring in non-member states and the substantive basis for the injunction.
The case squarely raised one of the most consequential open questions in European patent law: can the UPC assert jurisdiction over patent infringement in countries that have not signed the UPC Agreement?
The Court’s Holding
The UPC can accept jurisdiction over non-member states. The Court of Appeal rejected the argument that Article 34 of the UPCA limits UPC jurisdiction to member-state territory. Grounding its analysis in Article 4 and Articles 71a–71b of the Brussels I bis Regulation, the court reasoned that the UPC sits as a “common court” of its contracting member states, and there is “no indication” that member states intended to confer narrower jurisdiction on the UPC than their national courts would possess. When a defendant is domiciled in a UPC contracting state, the UPC may accept jurisdiction over infringement of the national parts of European patents designated for non-member states.
But accepting jurisdiction is different from exercising it. In a critical doctrinal innovation, the court separated jurisdictional acceptance from jurisdictional exercise. Even where the UPC has jurisdiction, it must apply international-law principles such as comity when deciding whether to actually grant relief covering non-member territories. This two-step approach provides a built-in safety valve against overreach.
A three-category framework for long-arm claims. The court established clear guidance for future cases involving non-member-state patent designations:
- Category I (revocation actions): The UPC must decline jurisdiction over revocation actions targeting non-UPC national designations, following the BSH precedent.
- Category II (infringement where UPC patents appear invalid): The court should offer the patentee an opportunity to withdraw and stay proceedings pending national revocation actions.
- Category III (infringement where UPC patents appear valid): The court may proceed and grant relief, conditioned on non-invalidation by competent national courts, if there is a “reasonable, non-negligible possibility” of validity.
The UK injunction was overturned—but not for lack of jurisdiction. Although the court confirmed it could reach UK infringement, it overturned the Mannheim injunction on substantive grounds. Fujifilm failed to establish that the correct Kodak entity committed or contributed to infringement under UK law. Mere arrangement of transport was insufficient to establish joint tortfeasor liability absent evidence of procurement or common design.
Key Takeaways
- The UPC’s territorial reach now extends beyond its member states. When a defendant is domiciled in a UPC contracting state, patentees can seek UPC relief covering patent designations for non-member countries, including the UK, Switzerland, Turkey, and others.
- Comity is the limiting principle. The two-step jurisdiction framework (acceptance vs. exercise) gives courts discretion to decline relief even where they have jurisdiction, preventing the UPC from becoming a forum for unbounded extraterritorial enforcement.
- Substantive national law still governs liability. Even with UPC jurisdiction established, a patentee must prove infringement under the applicable national law of the non-member state. Claims under UK patent law require demonstrating all elements of UK-law liability against the specific entity alleged to infringe.
- 14 headnotes establish procedural guidelines for future long-arm cases, making this the most detailed UPC appellate guidance to date on extraterritorial jurisdiction.
Why It Matters
This is arguably the most consequential UPC decision since the court became operational. For multinational companies, the ruling means that UPC proceedings can now reach beyond the 18 contracting member states to cover infringement in non-member territories like the UK—a development that fundamentally changes the strategic calculus of European patent litigation. A single UPC proceeding could, in appropriate cases, yield an injunction covering both UPC member states and non-members, eliminating the need for parallel national proceedings. However, the court’s comity safeguard and the requirement to prove infringement under foreign national law will prevent this from becoming a rubber stamp. For UK-based companies in particular, the decision means that post-Brexit, they are not beyond the UPC’s jurisdictional reach when their parent or affiliated entities are domiciled in UPC states.