Beyond borders: UPC asserts 'long arm' jurisdiction over UK patents

The UPC held that Fujifilm's patent was infringed and granted a permanent injunction restraining Kodak from selling the printing plates in issue in the UK. This is the first time the UPC has granted an injunction covering the UK, exercising its so-called 'long arm' jurisdiction. However, the UPC cannot revoke the UK part of a European patent other than inter partes – an invalidity action must be pursued through the national courts.

The judgment in Fujifilm Corporation v Kodak Holding GmbH and others (case number UPC_CFI_365/2023) delivered on 18 July 2025 marks a pivotal moment for patent holders seeking remedies across Europe including in non-UPC member states, such as the UK.

Background

The series of cases involved Fujifilm Corporation ("Fujifilm") asserting infringement of their European patents, namely:

• EP 3 511 174 B1 (planographic printing plates) ("EP 174") in case UPC_CFI_365/2023;
• EP 3 476 616 B1 (lithographic printing plates) ("EP 616") in case UPC_CFI_359/2023; and
• EP 3 594 009 B1 (chemical components for printing plates) ("EP 009") in case UPC_CFI_355/2023.

The actions were brought against three German Kodak entities ("Kodak"). All three patents were validated and in force in Germany and the UK. Fujifilm alleged that Kodak infringed the patents by manufacturing, importing, and offering for sale lithographic printing plate products and chemical components in both jurisdictions. German infringement was assessed under Section 9 of the Patentgesetz (the German Patents Act), while UK infringement was evaluated under Sections 60(1)(a) and 60(2) of the Patents Act 1977.

Proceedings were filed in both the Düsseldorf and Mannheim local divisions. At the Mannheim Local Division, Fujifilm issued proceedings against Kodak in relation to EP 174 and EP 616. Düsseldorf handled EP 009. Fujifilm had asked the court to grant injunctions not only in Germany but also in the UK where the patents were also in force.  However, Kodak challenged the UPC's jurisdiction in relation to the UK.

On 28 January 2025, the Düsseldorf Local Division revoked EP 009 for invalidity and dismissed the infringement claim (UPC_CFI_355/2023). Significantly, however, it confirmed that the UPC had jurisdiction over the UK part of a European patent where the defendant is domiciled in a UPC member state. In early February 2025, the Mannheim Local Division separated the UK portion of the case and indicated it would address jurisdiction pending the CJEU’s ruling in BSH Hausgeräte GmbH v Electrolux AB (Case C-339/22), which was subsequently issued on 25 February 2025. On 2 April 2025, the Mannheim Local Division upheld EP 174 and found infringement (UPC_CFI_365/2023), granting an injunction and damages in Germany, while revoking the German part of EP 616 for lack of inventive step and dismissing the infringement action (UPC_CFI_359/2023). Following the CJEU decision, the Mannheim Local Division extended its April findings to the UK on 18 July 2025: infringement was confirmed for EP 174 based on Kodak’s UK distribution, while EP 616 was held invalid, but inter partes only.

NB. See the complicated timeline of events in table form at the end of this article.

18 July 2025 decisions

The UPC found, in respect of EP 174, that the patent had been infringed in the UK. The court relied on the CJEU’s ruling in BSH Hausgeräte GmbH v Electrolux AB which clarified that under Article 4(1) of the Brussels I Recast Regulation (Regulation (EU) No 1215/2012 ("Brussels I Recast") courts in EU Member States may hear infringement claims concerning patents validated in third states—such as the UK—if the defendant is domiciled in the EU. However, they remained barred from ruling on validity, which is exclusively reserved for the national courts of the state of registration under Article 24(4) of Brussels I Recast. This means that while the UPC may assess infringement of UK-validated European patents, it cannot revoke or rule on their validity erga omnes (i.e. towards all) but only with inter partes effect.

The UPC assessed infringement under Section 60(1)(a) of the UK Patents Act 1977, finding that Kodak’s acts—specifically the offering for sale and importation of imaging systems embodying the patented technology—constituted direct infringement in the UK. The court also upheld claims under Section 60(1)(b), finding that Kodak’s conduct facilitated third-party use of the patented invention in the UK, thereby constituting indirect infringement. The UPC confirmed infringement, while leaving any challenge to validity within the remit of the UK courts.

In contrast, EP 616 was held invalid by the UPC for lack of inventive step under Article 56 of the European Patent Convention ("EPC"), meaning no UK infringement analysis was conducted for that patent (case number UPC_CFI 359/2023).

This outcome illustrates the nuanced post-Brexit jurisdictional landscape in which the UPC may adjudicate infringement in the UK but not validity (unless a pre-requisite to infringement), contingent on the domicile of the defendant.

Key takeaways from the judgment

• UPC jurisdiction over UK infringement: The Mannheim panel confirmed that the UPC can adjudicate on infringement of the UK part of a European patent, provided the defendant is domiciled in an EU Member State. This aligns with the CJEU's ruling in BSH Hausgeräte, which permits such jurisdiction under Article 4(1) of Brussels I Recast.
• No UPC power to revoke UK patent: While the UPC can assess validity as a prerequisite to infringement, it cannot revoke the UK part of a European patent with erga omnes effect. Any revocation or challenge to a patent's validity must occur before the UK courts or the UKIPO.
• UK Law applied by the UPC: The UPC applied UK substantive law, including Sections 60(1)(a) and (b) of the Patents Act 1977, to determine both direct and indirect infringement. Notably, the court found that direct deliveries to UK distributors and retention of title until arrival constituted acts of importing and offering under UK law.
• Indirect infringement recognised: Claims relating to methods of preparing and using the printing plates were upheld under Section 60(1)(b), reinforcing the UPC’s ability to grant relief for indirect infringement in non-UPC member states.
• Remedies granted: The court issued a permanent injunction for the UK, ordered destruction and recall of infringing products, and awarded damages dating back to July 2019. However, it declined to order publication or moral prejudice compensation.

UPC's 'long-arm' jurisdictional scope

There have been a few other UPC cases demonstrating the so-called 'long arm' jurisdiction of the UPC.

Another case that shows the UPC applying the same broad jurisdictional scope as the Fujifilm v Kodak case is the UPC's Court of Appeal judgment in XSYS Print Solutions GmbH v Esko Graphics Imaging GmbH (UPC CoA 156/2025). The UPC confirmed that it can hear infringement cases filed after the UPCA’s entry into force (1 June 2023) —even if the infringing acts occurred earlier. The UPC reasoned that 'the absence of any temporal limitation…. under Art 32(1) UPCA reflects the object and purpose of the Agreement…to prevent the difficulties caused by a fragmented market for patents in Europe and the variations between national court systems'.  This ruling makes the UPC even more appealing to patentees who wish to enforce their rights in a single action for infringing activities occurring pre-UPCA.

Most recently on 14 August 2025 in Dyson Technology Ltd v Dreame International Ltd (UPC_CFI_123/2025), Dyson was successful in preventing a Hong Kong-based company, Dreame International, from selling its hair styling products, which were similar to Dyson's well-known AirWrap products, in Spain. This is the first time the UPC has granted a preliminary injunction to a non-UPC country, in this case, Spain. The injunction applied to all four defendants sued including a German distributor, a Swedish affiliate and Eurep, a German company that helped Dreame comply with EU product safety rules and was classified by the court as an authorised representative which had provided an 'indispensable service to the actual infringer'. This case, like Fujifilm v Kodak, followed the CJEU ruling in BSH Hausgeräte GmbH v Electrolux AB and is another example demonstrating the UPC's ability to assert jurisdiction over non-UPC countries. The injunction in this case was granted under Spanish law, as the Fujifilm v Kodak injunction had been granted under UK law. As this decision relates to a preliminary injunction, the case is ongoing.

Strategic implications

This decision is a watershed for UK patent enforcement in the post-Brexit landscape. It confirms that:

• Patent holders can pursue infringement actions for UK-validated European patents before the UPC, leveraging its procedural efficiency and pan-European reach.
• UK-based infringers may face UPC litigation even if the UK is no longer a UPCA member.
• The UPC will apply UK law rigorously, including nuanced doctrines like joint tortfeasance and prior use rights under Section 64.
• Forum shopping reimagined: With UPC jurisdiction confirmed, patentees may opt for UPC proceedings over UK national courts, especially when defendants are EU-based to ensure they cast their net as wide as possible.
• Evidence matters: The court placed significant weight on the claimant’s inability to access internal delivery data, shifting the burden to defendants to rebut allegations with specificity.
• Tailored remedies: The UPC’s willingness to grant UK-specific remedies—including injunctions and destruction orders—demonstrates its flexibility in cross-border enforcement.
• Parallel enforcement strategies: While revocation remains the domain of UK courts, infringement proceedings can now be pursued in parallel or independently before the UPC.
• Legal borders redefined: Businesses operating across Europe and the UK must rethink their enforcement strategies—not just within Europe, but across its legal borders.

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Timeline of Claims

Below is a table form of the timeline of events to clarify the various interrelated proceedings and outcomes:

EP 009 – “Chemical components for printing plates” (UPC_CFI_355/2023)

EP 174 – “SONORA XTRA-3 printing plates” (UPC_CFI_365/2023)

EP 616 – “Lithographic printing plate technology” (UPC_CFI_359/2023)