Rapid Reaction: UPC Court of Appeal clarifies the approach to long-arm claims (Fujifilm v Kodak)

Accepting jurisdiction is one question; exercising it is another.

The UPC Court of Appeal’s 2 June 2026 decision in Fujifilm v Kodak¹ provides extensive clarifications on how the UPC will approach long-arm claims based on national designations of European patents in non-UPC territories. The Court confirmed that Article 34 of the UPC Agreement (UPCA) does not confine the UPC’s competence to its own territory (UPC member states) but drew an important distinction between accepting jurisdiction and exercising it. The decision also sets out a structured framework for handling invalidity objections and comity where infringement claims are brought based on extra-territorial EP designations.

This is the first of two appeals in the Fujifilm v Kodak dispute, which were both heard by the Court of Appeal on 27 May and 30 May 2026. In this decision, an injunction in the UK (and in Germany) was overturned, but not for lack of jurisdiction. The second decision, relating to a different patent, is still awaited. This article focuses solely on the long-arm / international jurisdiction aspects of the first decision. A full analysis of both decisions will follow in due course.

Article 34 UPCA is not a territorial limit

The Court rejected the argument that Article 34 UPCA confines the UPC’s jurisdiction to UPC member states. In the Court’s view, Article 34 does not limit the UPC’s jurisdiction to the UPC territory only; instead, it clarifies that, as a rule, UPC decisions cover the territory of all Contracting Member States for which a European patent has effect, unless a more limited scope is requested. According to the Court, there is ‘no indication’ that the Contracting Member States intended to give the UPC narrower jurisdiction than national courts in situations where national courts would have extra-territorial jurisdiction.

That conclusion was reinforced by the Court’s reliance on the Brussels I bis (BR) framework and the UPC’s position as a common court. Referring to Articles 71a and 71b BR, the Court noted that the UPC, as a common court, will have jurisdiction where a national court of a Member State party to the UPCA would have jurisdiction in a matter governed by the BR. 

The Court also pointed to Article 3(c) UPCA, which does not limit the ambit of the UPCA to European patents only insofar as they are validated for the UPC territory, and to Article 24(3) UPCA, which expressly leaves room for the application of the law of non-contracting states, noting that the use of ‘in particular’ in this article makes clear that the application of foreign law does not only apply to the specific matters mentioned.

Domicile remains a key anchor: Article 4 BR

The Court treated the defendants’ German domicile as the key jurisdictional hook in this case. It held that, where jurisdiction exists under Article 4 BR because the defendant is domiciled in the territory, the Court cannot decline jurisdiction on the ground that a non-Member State court would be a more appropriate forum. In doing so, the Court relied on Owusu² and its recent endorsement by the CJEU in BSH v Electrolux (C-339/22). The Court rejected the suggestion that accepting jurisdiction on that basis was contrary to the TRIPS Agreement.

Importantly, the Court also rejected the argument that jurisdiction in this case depended on a sufficiently pleaded case of infringing acts committed in the UK. It held that, for the purposes of establishing jurisdiction over the defendants, the relevant connection was the defendants’ domicile in a Contracting Member State, not the place where the alleged acts occurred. On that basis, the plausibility of the allegations of infringing acts in the UK was not a threshold question for accepting jurisdiction in this case. Nor was the validity of the patent, this being a matter to consider when deciding on the substance of the infringement action, not when establishing jurisdiction. 

However, during the hearing, the Court expressed the view that claimants seeking to rely on long-arm jurisdiction must clearly specify the basis relied upon in their claim. Whilst reliable evidence of infringement in the UK was not required in this case due to the defendants’ domicile in Germany, in cases where domicile alone is not enough to confer jurisdiction (e.g. if relying on an anchor defendant and trying to extend long-arm jurisdiction to extra-territorial acts and defendants under Article 8 BR) the specific acts of defendants are likely to be more important for establishing more expansive jurisdiction. Further clarity from the Court of Appeal can therefore be expected on this in due course. 

Accepting jurisdiction is one question; exercising it is another

One of the most interesting aspects of the judgment is the Court’s distinction between accepting jurisdiction and exercising jurisdiction. Accepting jurisdiction follows from the BR. Exercising that jurisdiction, however, requires the Court to apply not only the law governing the relevant patent, but also ‘international law principles such as comity’. That distinction enables the Court to take a permissive approach to jurisdiction while still building procedural safeguards into how long-arm claims are managed.

The Court also sets out a structured framework for managing various categories of case (which it designates I, I and III), primarily giving guidance on how to deal with invalidity arguments. 

I: a revocation action lodged with the UPC with respect to non-UPC territory designations of European patents in the territories of EU Member States and signatories to the Lugano Convention (EU/LC EPs) and/or designations in territories of non-EU and non-Lugano Convention States (non-EU/LC EPs)

The Court must decline jurisdiction to decide the action in accordance with BSH.

II: an infringement action which is also based on EU/LC EPs and/or non-EU/LC EPs, where the patent in the UPC territory is considered invalid but the product or process would infringe if valid

In this case, the Court should first offer the patentee the opportunity to withdraw the extra-territorial infringement claim. 

For EU/LC EPs (e.g. Spain/Switzerland), if the patentee does not withdraw the action, the defendant should generally be given an opportunity to bring revocation proceedings before the competent national court, and the UPC should generally use its discretion and/or case management powers to stay the infringement proceedings if such revocation proceedings are pending or are filed within the window given. If the defendant does not bring a national revocation action within the given time period, the UPC must assume the patent is valid and decide infringement on that basis.

In this second scenario, for non-EU/LC EPs (e.g. the UK), the Court stated that if the patentee does not withdraw the infringement claim, the infringement action should be dismissed unless there are specific reasons not to do so, for example because the extra-territorial claims are different and may be considered valid.

III: an infringement action which is also based on EU/LC EPs and/or non-EU/LC EPs, where the patent in force in the UPC territory is considered valid and infringed in the UPC territory

The third scenario is the one that will attract the most attention in practice: where the patent in force in the UPC territory is considered valid and infringed, the Court may, where appropriate and to avoid undue delay, proceed on the basis that there is a ‘reasonable, non-negligible possibility’ that the patent will be held valid by the competent national court, and may issue relief subject to a condition subsequent that the relevant claims for infringement are not held to be invalid by the competent national court. In the event of a final decision by the competent national court finding the patent valid, the UPC injunction will become permanent. Conversely, if the competent national court at first instance or on appeal holds the patent to be wholly or partially invalid, then the UPC decision, including its orders, will fall away. In that case, the patentee may seek a stay of the proceedings until a final decision is rendered by the competent national court.

According to the Court of Appeal, this approach should apply to both EU/LC EPs (based on Article 24(4) BR and Article 22(4) Lugano Convention) and non-EU/LC EPs (‘in view of comity’).

This is a significant and practical framework. It preserves the UPC’s ability to grant effective relief, while also recognising the limits imposed by Article 24(4) BR, the Lugano Convention rules, and comity. It also gives the parties a roadmap: patentees may need to decide whether to maintain extra-territorial claims; defendants may need to move quickly in national revocation forums if they want to resist a UPC long-arm injunction.

Joint tortfeasorship falls within UPC jurisdiction, but still has to succeed under the applicable national law

The Court addressed the argument that, even if a given defendant does not itself perform a primary infringing act, it can still be liable on a joint tortfeasorship theory. On jurisdiction, the Court held that the UPC’s competence over patent infringement actions extends to allegations of joint tortfeasorship, citing its earlier decision in Belkin v Philips³.

However, in relation to Kodak’s activities in the UK, Fujifilm’s claim failed on the facts and under UK law. The Court held that Kodak Limited, a UK entity that was not a defendant in the UPC action, retained title of the allegedly infringing products throughout the manufacturing process and was the importer into the UK, even if one of the German defendants, Kodak Graphic, manufactured and arranged for the transport of the alleged infringing products to the UK. Arranging transport was not enough to make the German manufacturing entity the importer. In relation to the joint tortfeasorship claim, the Court determined that, under UK law, merely supplying goods outside the jurisdiction to a UK party that later sells them within the jurisdiction is not enough for joint tortfeasorship, even if the supplier knows that is what will happen, citing Generics v Lundbeck⁴. The Court also referred to Lifestyle Equities v Ahmed⁵ for the proposition that joint tortfeasorship requires procurement or common design, together with knowledge of the essential facts making the act wrongful. On the evidence, those requirements under UK law were not established in relation to any of the Kodak companies prior to Fujifilm’s allegation of infringement.

Why this decision matters

For practitioners, the decision provides much-needed clarity regarding how the UPC considers long-arm claims should be managed, which goes beyond the question of whether the UPC has jurisdiction or not. The Court has supplied a framework: Article 34 UPCA is not a territorial bar; Article 4 BR provides the jurisdictional anchor where the defendant is domiciled in UPC territory; validity and infringement must be carefully delineated; and comity is addressed through case management, withdrawal opportunities, stays, and the granting of condition subsequent relief rather than by denying jurisdiction at the outset.

Just as importantly, the judgment shows that clearing the jurisdictional hurdle does not guarantee success on the merits. The UPC may accept jurisdiction over an extra-territorial designation, but the patentee must still prove infringement under the relevant foreign law against the correct entity and on a properly supported theory. In Fujifilm v Kodak, that is where the UK claim failed.