Focussing in on long-arm jurisdiction: the UPC grants first injunction covering the UK

This article was first published in Kluwer Patent Blog, August 2025.

In a recent decision by the Mannheim Local Division, the UPC granted the first-ever UPC injunction relating to the UK. This is a landmark decision following a number of preliminary judgments that sought to expand the territorial jurisdiction of the UPC by building on the decision handed down by the Court of Justice of the European Union (CJEU) in BSH v Electrolux (C-5339/22). A detailed summary of the CJEU’s judgment and the recent UPC case law incorporating this ruling, prior to this latest judgment, was recently published on the Bristows website and is available here.

Background 

In this case, Fujifilm had brought proceedings against three Kodak companies domiciled in Germany (together “Kodak”) for infringement of the German and UK designations of its European patents related to printing plates in both the Düsseldorf and Mannheim Local Divisions. The proceedings against Kodak in the Düsseldorf division were concluded earlier this year when the UPC held it did have jurisdiction to rule on infringement in the UK but this was not necessary as the patent was held to be invalid in Germany and likely invalid for the same reasons in the UK (covered in more detail in the 17 July 2025 Kluwer article). 

In the Mannheim Local Division, the infringement claims were separated for each patent (EP 3 511 174 (EP 174); case UPC_CFI_365/2023 and EP 3 476 616 (EP 616); case UPC_CFI_359/2023) with Kodak challenging validity in both cases. The Court also separated the part of the decision relating to its jurisdiction over the UK designations as the CJEU’s decision in BSH v Electrolux had not been handed down by the end of the oral hearing in this case. In April this year, the Court held that the German designation of EP 174 was valid based on Fujifilm's main request (narrower than the granted claims) and that Kodak infringed the patent in Germany while EP 616 was held to be invalid. 

EP(UK) 174 proceedings

Jurisdiction and validity

In the separated proceedings relating to the UK designation of EP 174, the Judges confirmed that as a result of the CJEU’s ruling in Electrolux, the UPC did have jurisdiction to decide infringement of the UK patent, even if invalidity was raised as a defence. This was on the basis that Art. 4(1) of the Brussels Recast Regulation applied as the Defendants were domiciled in an EU Member State participating in the UPC (Germany) and the patent was granted in a non-EU member state (the UK) that was not a party to the Lugano Convention or another bilateral agreement with the UK that could limit the Art. 4(1) jurisdiction extending to the UK. The Court noted that there were no infringement or validity proceedings in the UK relating to the patent so Art. 33 or 34 of the Brussels Recast Regulation (pursuant to which the Court of the Member State may be required to stay proceedings) did not apply. The Court also concluded that Art. 34 of the UPC Agreement (UPCA) did not restrict the UPC’s ability to apply the Electrolux jurisdiction. There was no indication that the UPCA contracting states had intended to transfer to the UPC their jurisdiction with regard to their own designation of a European patent whilst reserving jurisdiction to their national courts for other designations, and therefore the UPC had as broad a jurisdiction in respect of European patents as the participating EU member states.

The Court considered the validity of the UK designation as a pre-requisite for a finding of infringement and stated that the UK designation of EP 174 in the proposed amended form of the main request was deemed valid for the same reasons as the German designation had been found to be in the earlier hearing. No arguments had been put forward by Kodak that an English Court may apply UK or EPC law in a different way which would lead to a different outcome on validity. 

Kodak had also argued that, given EP 174 had been upheld in amended form, Fujifilm should notify the UK patent office of these amendments as this is a requirement of UK procedural law. The Court disagreed, explaining that procedural matters are governed by the procedural law of the forum at hand (i.e. UPC law) in accordance with the fundamental principles of international law. In addition, a finding of infringement and validity based on an amended form of the UK patent would only have inter partes effect and would not require the UK register to be amended to narrow the claims to the main request.

In considering validity, the Court held that Kodak’s request for a declaration in relation to the validity of EP(UK) 174 patent was inadmissible (the Court having decided that the granted claims of EP(UK) 174 were invalid for the same reason as those of the German designation) but left it open as to whether Kodak were requesting the UPC to grant declaratory relief or to revoke the national patent. In any event, it reiterated that the UPC did not have jurisdiction to revoke the national part of a European bundle patent for non-UPCA contracting states. As to the option of declaratory relief, the Court left open the possibility that, following BSH v Electrolux, courts in the European Union had jurisdiction to grant declaratory relief in relation to the validity of UK patents. However, the Judges commented on the fact that Kodak did not actually have a relevant interest in a declaration that the UK part of the patent was invalid as it would not be binding on the UK authorities (who are solely responsible for the revocation of the UK part) or on the patentee in future revocation proceedings in the UK (if it were, the UPC would indirectly be determining the validity of the UK national patent and this would be counter to the principles established by the CJEU).

Infringing acts in the UK

Fujifilm put forward evidence of Kodak’s activity in the UK and on the law of infringement in the UK, including the law on direct infringement and joint tortfeasorship. Kodak disputed the infringement allegations, arguing that title in the products manufactured for the UK rested with Kodak’s UK affiliate (such that the three German companies were not carrying out acts in the UK) and that it was entitled to rely on a private/continuing prior use defence. However, the Court held that Kodak had failed to provide sufficient evidence to support its position. As such, the Court found that all three German Kodak defendants were either directly or jointly carrying out infringing acts in the UK and rejected arguments on the prior use defence (as it had done in the earlier proceedings concerning the German designation), whether under German or UK law.

Following this, the Mannheim Local Division considered the Fujifilm’s request for a permanent injunction, noting that although the request had its basis in UK law it had not been submitted that the powers to grant an injunction under UK law differed from the UPC’s powers under the UPCA. As such, the Court had discretion to grant the permanent injunction under both UK law and the UPCA which it chose to exercise, referring to the reasoning in its earlier decision relating to the German designation in which a permanent injunction had been granted for the German territory. The Court also ordered Kodak to pay damages to compensate all losses caused by infringing acts in the UK since 2019, destroy any infringing products in the UK and set a penalty due in the event that the injunction was breached.

EP(UK) 616 proceedings

In the proceedings relating to the UK designation of the EP 616 patent, of which the German part had been revoked in the earlier main proceedings, the Court held that the UK patent would likely be invalid for the same reasons as in its earlier judgment given Fujifilm had failed to provide any evidence that validity would be assessed differently under UK law. As such, the infringement action regarding the UK designation was unfounded and inadmissible. As in the EP 174 proceedings, the Court held that the request for a declaration on validity was inadmissible as the UPC only has jurisdiction to assess the validity of a UK patent as a pre-requisite for a finding of infringement.

Impact on future cases involving the UPC’s long arm jurisdiction 

As noted in our previous article, the extent of the UPC’s long arm jurisdiction is a trending issue and will continue to be an important consideration for defendants in the wake of this judgment. A point of note was Fujifilm’s ability to secure a positive infringement finding and the relief that followed based on amended claims that were not as such in force in a non-UPC country. The current situation, exemplified by the EP 174 proceedings described above, allows the patentee to obtain an injunction in the UK based on an amended UK patent without having to actually amend the scope of its patent on the UK patent register. 

In many ways, Kodak’s choice to not start a revocation action in the UK was key to the outcome reached by the Mannheim Local Division. It was on this basis that the Court declined Kodak’s request for a stay, held that there was nothing in the Brussels Recast Regulation that would require proceedings to be stayed or dismissed, and held that there was no reason for a stay subject to r.295(a) or (m) of the UPC Rules of Procedure. Had Kodak brought a revocation action in the UK, it may also have been possible for it to make an application for an anti-suit injunction from the UK Court. Further, had Kodak been able to bring a UK revocation prior to Fujifilm commencing its UPC proceedings (or potentially before filing its defence raising invalidity of the UK patent), it could well have been able to block the action by relying on the rules of lis pendens. Fujifilm would also have been required to permanently amend the claims of its UK patent in the UK proceedings to avoid revocation (assuming the UK court would have held the granted claims to be invalid as the UPC had). These considerations are evidence that, following the expansion of the UPC’s jurisdiction post-Electrolux, strategy is more important than ever for parties at risk of an injunction in EPC contracting states.

Whilst it is common for parties in national proceedings to submit expert evidence on the law in other jurisdictions for a variety of reasons, it was interesting to see the UPC’s approach when applying UK law. It is clear from both judgments that for procedural matters (including the procedure to be followed when claim amendments are proposed) the law of the UPC will be applied. In general, the judges did not explore the differences between substantive UPC and UK law in much detail; the judges explained that in relation to the issues of validity, prior use and permanent injunctions relevant to the present case they had been given no reason to believe that there was any deviation. This outcome may be heavily dependent on the nature of the case, plus the fact that in this case previous conclusions had already been reached on the German designations of both EP 174 and EP 616 before the judges turned their minds to the question of how to decide the cases under UK law. However, this may not be true for a case involving a less harmonised area of law, for example the law on plausibility for which the test currently is said to differ significantly between the UK and the EPO and most EU countries.¹ As such, the quality and quantity of expert evidence on foreign law could play an important role in future cases involving patents designated in ‘third state’ countries outside the UPC and European Union. 

The key takeaway from these Fujifilm proceedings is that not only does the UPC consider itself to have jurisdiction to decide infringement, even when invalidity is raised as a defence, for European patents designating the UK and other countries outside the European Union, but also to grant injunctive relief extending outside the EU. This approach only applies where the non-EU country is not a party to the Lugano Convention (thus not benefiting from the provisions equivalent to Article 24(4) Brussels Recast Regulation which provides contracting countries with exclusive jurisdiction over validity issues) or another bilateral agreement stipulating that the third country has exclusive jurisdiction over disputes relating to validity (or even infringement) of patents in its territory. It was left open by the Mannheim Local Division whether a bilateral agreement between the UK and one or several UPC contracting states (but not all) would be enough to prevent the UPC from continuing with an infringement action once the validity of the UK patent had been called into question. It is not clear at present whether the UK Government will choose to continue to pursue accession to the Lugano Convention or to negotiate one or more bi-lateral agreements with exclusive jurisdiction provisions for UK patents. 

While these decisions culminating in the present Fujfilm v Kodak decisions have provided some clarity on the approach that the UPC is likely to take when granting remedies for successful long arm jurisdiction claims, a number of questions still remain to be answered and we are yet to see how national courts will approach situations in which national litigation has been commenced in parallel. 

¹ This is exemplified in recent pan-European litigation of Bristol-Myers Squibb’s apixaban compound patent in which the English court’s finding of invalidity is an outlier in Europe.