The Unified Patent Court grants “long-arm” injunction covering the UK

The defendant raised an invalidity defence and, in line with the CJEU’s decision in Electrolux, the UPC assessed validity as a pre-requisite for infringement while maintaining jurisdiction, but with the outcome only taking effect between the parties. Ultimately, the UPC upheld the UK designation in amended form, on an inter partes basis, and granted a permanent injunction covering the UK. In short, the patentee successfully enforced in the UPC an amended (albeit not formally) non-UPC designation of an EP in the UK.

This is part of a string of decisions confirming that the UPC is prepared to reach outside its borders, with strategic implications for cross-border patent enforcement (and defence) in the UK.

Case details: Fujifilm Corporation v Kodak, Mannheim Local Division, July 18, 2025 (UPC_CFI_365/2023).

Background

Fujifilm sued several Kodak entities alleging infringement of EP 3 511 174, concerning planographic printing plates. The defendants were domiciled in Germany: one was a contract manufacturer exporting plates to a UK group company for finishing, another was the German sales company purchasing the alleged infringing products from a UK-based group company, and the final defendant was a wholly owned subsidiary.

By a UPC decision of April 2, 2025, the German part of EP 3 511 174 was found to be valid and infringed. However, Kodak filed a preliminary objection rejecting the UPC’s international jurisdiction and competence regarding the UK. The allegations concerning the UK designation of the patent were therefore separated pending the decision in BSH Hausgeräte GmbH v Electrolux AB C-339/22 (Electrolux).

Decision of the Mannheim LD

The Mannheim LD ruled on a number of key issues as follows.

Jurisdiction

The UPC had jurisdiction to rule on the infringement of a UK designation of an EP. The Electrolux decision applied so that, under Art 4(1) Brussels Recast, the court of the domicile of an EU defendant (here Germany) or the UPC, a common court which is deemed to be a court of a member state for these purposes, has jurisdiction to rule on infringement of a patent granted in a non-EU member state (here the UK), even where invalidity is raised as a defence.

The restrictions to the Electrolux principle did not apply in this case. The Lugano Convention was not applicable because the UK is not a member, and the parties did not identify any relevant (pre-2001) bilateral agreement with the UK concerning jurisdiction. Similarly, there were no UK proceedings relating to the infringement or validity of the UK patent so there was no reason to stay or dismiss these proceedings. There was therefore no room for the UPC to deny jurisdiction and deviate from the Electrolux ruling.

Patent amendment and procedural requirements

Fujifilm’s “claim amendments” were admitted. However, the UK procedural requirement to notify the UKIPO of the amendments did not apply because the infringement proceedings were governed exclusively by the procedural law of the UPC. Therefore, no formal amendment took place.

Validity and infringement relief

The validity and infringement of the UK designation of the EP were determined according to UK substantive patent law. No submissions were made as to why validity would be any different under UK law but evidence on infringement was submitted and applied.

The court refused Kodak’s request for “a decision that the EP is invalid in its entirety.” Under Electrolux, the UPC has no jurisdiction to revoke the UK designation. Similarly, if the request was for declaratory relief, a declaration from the UPC cannot bind the UK authorities, as this would be equivalent to deciding indirectly on the validity of the foreign designation, which is also contrary to Electrolux principles.

The court upheld the UK designation in amended form, on an inter partes basis, and granted a permanent injunction covering the UK, which the court deemed itself to have the power to grant under both s.61(1)(a) UK Patents Act 1977 and Article 63(1) UPCA. In the absence of pending revocation proceedings in the UK, there was no reason to stay the UPC infringement proceedings nor make the decision conditional upon the validity of the UK part of the EP.

In summary, the patentee effectively enforced what was an amended non-UPC designation of an EP, without formal amendment.

Key takeaways and implications

• The UPC will decide cases involving infringement of a UK (or other non-UPC/EU) designation of an EP if the defendant is domiciled in a UPC member state. This means that EU-based supply chains that interface with the UK (e.g., through manufacturing, exporting, or purchasing) may be subject to the UPC’s jurisdiction and enforcement in the UK of UK designations of EPs.
• The UPC may also make inter partes validity determinations regarding a UK (or other non-UPC/EU) designation of an EP and consider claim amendments. This allows the UPC to grant a permanent injunction covering the UK based on an “amended” UK designation of an EP without formalising amendments.
• Potential defendants wishing to avoid the UPC’s jurisdiction in these circumstances should be proactive in planning litigation strategies. This could include launching an early UK revocation or DNI action and later making a stay application in respect of the UK designation at the UPC.
• The UPC will apply the relevant non-UPC national patent law when considering infringement and validity. Litigants should therefore consider adducing evidence from relevant local counsel.