We present here a recent decision by the Unified Patent Court (UPC) concerning its jurisdiction over an action for infringement of a European patent in the United Kingdom. This decision demonstrates that the territorial jurisdiction of the UPC extends to territories of non-member states.
The Unified Patent Court (UPC) is a common court for 18 states, all of which are members of the European Union, for whom the Agreement on a Unified Patent Court (UPCA) recently entered into force on 1 June 2023.
Among the UPC member states are Germany, France, and Belgium. The United Kingdom is not a member.
It might therefore be assumed that decisions of the UPC have no impact in the UK.
However, European patents can have effect in UPC member states as well as in non-member states, such as the UK.
In this context, on 28 January 2025, the UPC issued a decision regarding its jurisdiction to hear an action for infringement of a European patent in the UK.
Infringement Action Concerning a European Patent in Force in the UK
European patent No. EP 3 594 009 was granted on 21 April 2021. It is owned by Fujifilm. It remains in force in both Germany and the United Kingdom.
The claimant, Fujifilm Corporation, brought an infringement action before the Local Division in Düsseldorf.
The defendants, Kodak GmbH, Kodak Graphic Communications GmbH, and Kodak Holding GmbH, responded by filing a counterclaim for revocation of the patent in all UPC member states where the patent has effect—here, Germany.
They also challenged the UPC’s jurisdiction to adjudicate the infringement action with respect to the UK designation of the patent.
Jurisdiction Regarding Infringement in the United Kingdom
The court stated the following:
– According to Article 4(1) of the Brussels I bis Regulation (Regulation (EU) No 1215/2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters), the Kodak companies, all domiciled in Germany, must be sued in the courts of that state.
Furthermore, with respect to litigation before the UPC, Article 31 of the UPCA establishes that the UPC’s international jurisdiction is to be determined in accordance with the Brussels I bis Regulation. Additionally, Articles 71a to 71e of the Brussels I bis Regulation, as introduced by Regulation (EU) No 542/2014, provide that the UPC is considered a court of a member state. Consequently, the Düsseldorf Local Division is a court of Germany within the meaning of Article 4(1) of the Brussels I bis Regulation and has jurisdiction to hear infringement cases brought against the Kodak companies regarding a European patent.
– The defendants argued that under Article 34 of the UPCA, the territorial scope of a UPC decision cannot extend to the United Kingdom.
More specifically, Article 34 of the UPCA provides:
” Territorial scope of decisions
Decisions of the Court shall cover, in the case of a European patent, the territory of those Contracting Member States for which the European patent has effect.”
The defendants interpreted this article to mean that “Contracting Member States” refers only to UPC member states. They argued that since the United Kingdom is not a UPC member state, the territorial scope of a UPC decision cannot be extended to the UK.
– However, the court clarified that Article 34 does not address the UPC’s international jurisdiction per se—which is governed by Article 31 of the UPCA (see above)—but rather states that UPC decisions apply only in territories where the patent has effect. The court explained that European patents are not necessarily in force in all Contracting Member States of the UPCA, and that Article 34 is intended to specify that UPC decisions apply to the entire territory of the UPC, except for the territories of Contracting Member States of the UPCA where the European patent is not in force.
Accordingly, the Düsseldorf Local Division concluded that it has jurisdiction to hear actions for infringement of a European patent where the defendant is domiciled in Germany, even if the alleged infringement took place in a non-UPC state, in this case, the United Kingdom (pages 20 to 23 of the decision).
Jurisdiction Regarding the Validity of the Patent
It should be noted that in this case, the question of jurisdiction regarding the validity of the UK part of the patent was not addressed. Indeed, the defendants did not request revocation of the patent in the UK, neither before the UPC nor before a UK court.
Decision on the Infringement Action
The court having decided to revoke the patent in all UPC Contracting Member States where it had effect—i.e., Germany—the infringement action was dismissed in respect of the German part of the patent.
As for the alleged infringement in the UK, the court stated that the validity of the patent is a prerequisite for the imposition of sanctions based on the finding of infringement. No revocation action was filed in the UK. The claimant did not provide any reason to suggest that the validity of the patent should be assessed differently in the UK than in Germany. Therefore, although the court could not rule on the validity of the UK part of the patent, nor revoke it, it held that the infringement action could not succeed in the UK (page 60 of the decision).
Conclusion
This decision by the Düsseldorf Local Division thus suggests that an alleged infringer domiciled in a UPC member state could be subject to sanctions by the UPC for acts committed in a territory where a European patent is in force, even though that territory is not part of a UPC member state. The territorial jurisdiction of the UPC is therefore extended to territories of non-member states.
by Agnès PICON, 13 May 2025