On 18 July 2025, the Unified Patent Court (UPC) affirmed for the first time that it has jurisdiction to consider infringement of a European patent validated in the United Kingdom (See here). For many businesses, this decision represents a notable marker in how the UPC might be used to warn off infringement of a European patent that is taking place in the UK.
Background
This ongoing dispute relates to a European patent (EP 3511174 B1) granted to Fujifilm Corporation, which relates to lithographic plate precursors. Proceedings were commenced by Fujifilm at the UPC against various Kodak entities, alleging that these entities infringed the patent by virtue of their marketing of the product “SONORA XTRA-3” in the EU and elsewhere, including in the UK.
In April 2025, the Mannheim Local Division (LD) separated the proceedings so that the issue of infringement in the UK could be dealt with in isolation. This had followed a stay to await the outcome of the judgment in BSH v Electrolux, where the Court of Justice of the European Union (CJEU) affirmed that an EU court had jurisdiction to rule on infringement and validity of patents granted outside the EU. The ruling on validity was however only for the assessment of infringement, and the validity ruling would not affect the existence or content of the non-EU patent or cause the national register in the non-EU country in question to be amended.
What has the UPC decided?
In their decision, the UPC has now awarded Fujifilm an injunction in respect of the UK part of the European patent and ordered Kodak to provide information to enable damages to be assessed. The UPC is thus planning on ordering Kodak to pay damages to Fujifilm in respect of the UK infringement.
The key headnotes of the UPC’s decision are as follows:
- The UPC has jurisdiction to decide upon the infringement of the UK part of a European Patent. However, the UPC does not have jurisdiction to revoke the validated national part of a European Patent in relation to the United Kingdom with erga omnes effect.
- The defendant in an infringement action before the UPC, which relates to the UK part of a European bundle patent, is allowed to raise an invalidity defence without being obliged to file a national action for revocation in the UK. The UPC will then assess the validity as a mere prerequisite for infringement.
- In the absence of a pending national revocation proceeding in the UK, there neither is a reason to stay the infringement proceeding before the UPC, nor to make the decision conditional upon the validity of the UK part of the European patent.
- There is no legitimate interest of a defendant obtaining a declaration that the UK part of a European bundle patent is invalid since such declaratory relief is not binding on the national authorities.
Implications of the UPC’s Decision
This decision means that businesses holding European patents that are in force in the UK may now be able to obtain an injunction and damages from the UPC in respect of patent infringement in the UK, without ever going to a UK court. This applies even if validity of the UK part of the patent is put in issue at the UPC.
What is yet to be tested and is currently uncertain is how Fujifilm will enforce this injunction in the UK, and whether UK courts will pay any attention to an injunction awarded by the UPC. It might even be possible that Kodak will apply to a UK court for an order that the UPC’s decision should be considered to have no effect in the UK.
It should be noted that this decision is subject to appeal, and so it is possible that the UPC’s court of appeal may overturn the findings of the Mannheim LD. However, in light of the evolving EU patent litigation landscape in the last six months and the CJEU’s BSH decision, a major overhaul by the court of appeal seems unlikely.
The long-arm jurisdiction being claimed by the UPC is a rapidly evolving area of law and we expect to see many more decisions of this nature being issued in the coming months. For more information about the decision, please contact a Secerna attorney.