UPC establishes jurisdiction over UK patent rights in landmark decision

🎂 Short & Sweet

The Unified Patent Court (UPC) has delivered a groundbreaking decision that significantly clarifies the enforcement landscape for UK patent rights in the post-Brexit era. In Fujifilm Corporation v. Kodak GmbH and Others ((UPC_CFI_365/2023), and (UPC_CFI_359/2023), both decided on 18 July 2025), the Mannheim Local Division (LD) established important precedents for patent holders seeking to enforce their rights across European jurisdictions, including the United Kingdom.  

The Mannheim LD granted an injunction for the infringement of the UK part of a European Patent (EP) and also confirmed that, whilst the UPC cannot revoke UK patents with erga omnes effect, the UPC can assess validity (with inter partes effect only) as a prerequisite for infringement.

Key Legal Developments

🤷‍♀️ UPC Jurisdiction Over UK Patents Confirmed

The court definitively established that the UPC has jurisdiction to decide infringement actions relating to UK national parts of European patents. This ruling follows the European Court of Justice's decision in BSH Hausgeräte (C-339/22), which confirmed that EU member state courts retain jurisdiction over patent infringement actions involving non-EU states, subject to specific limitations.

Critical limitations identified:

• The UPC has jurisdiction to decide infringement of UK patents
• The UPC does not have jurisdiction to revoke UK patents with erga omnes effect
• Validity assessments are limited to inter partes effects as prerequisites for infringement determinations

🤷‍♀️Invalidity Defence Framework Clarified

The court established that defendants can raise invalidity defences without filing separate UK national revocation proceedings. This streamlined approach allows for comprehensive patent disputes to be resolved within UPC proceedings, though the validity determination only has inter partes effect and does not affect the patent's existence in UK registers.

🤷‍♀️ No Automatic Stay Requirements

Significantly, the court ruled that UPC infringement proceedings need not be stayed in the absence of pending UK national revocation actions. 

Case Background and Enforcement Success

UPC_CFI_359/2023 involved Fujifilm Corporation's European Patent EP 3 476 616 B1 relating to lithographic printing plate technology. Enforcement was sought against Kodak entities across multiple European jurisdictions, including Germany and the UK.  The court in April 2025 found the European Patent invalid in respect of Germany. This latest decision follows the same reasoning for the UK, albeit inter partes.  The infringement action was therefore dismissed.  

UPC_CFI_365/2023 involved Fujifilm Corporation's European Patent EP 3 511 174 B1. The court in April 2025 found direct infringement of the German patent and issued an injunction in respect of Germany. This latest decision also follows the same reasoning and found direct infringement of the UK patent as granted through Kodak's commercialisation of "SONORA XTRA-3" printing plates, noting that one of the defendants made direct deliveries to UK entities whilst retaining title until products reached UK distributors. Relief was therefore granted in respect of the UK. 

Comprehensive relief granted:

• Permanent injunction covering offering, placing on market, using, storing and importing within the UK
• Damages declaration with amounts to be determined in subsequent proceedings
• Detailed information orders covering distribution channels, quantities, pricing, and customer data
• Corrective measures including product destruction and market recall
• Penalty payments of €50 per square metre for violations

🫵What This Means for You

For Patent Holders:

• Enhanced enforcement options: You can now pursue through the UPC comprehensive European patent enforcement, including non-UPC states such as the UK, without requiring separate UK proceedings
• Invalidity challenges: Invalidity challenges in relation to non-UPC states can be addressed within UPC proceedings, on an inter partes basis, without automatic stays or parallel actions in the non-UPC states 
• Strategic advantages: The ability to obtain pan-European relief, including UK coverage, through a single court system may provide significant procedural and cost efficiencies

For Potential Infringers:

• Increased exposure: Activities in non-UPC states such as the UK may now be subject to UPC jurisdiction and enforcement, expanding potential liability beyond EU territories
• Defence strategies: While invalidity defences before the UPC remain available for non-UPC states, the inter partes limitation means successful challenges won't invalidate European patents in those states. However, if national revocation proceedings are started, this is likely to add a procedural hurdle that could delay patent enforcement across European jurisdictions
• Compliance considerations: Companies operating across European markets, including the UK, should review their patent clearance procedures in light of expanded UPC jurisdiction

For Legal Practitioners:

• Jurisdictional clarity: The decision provides essential guidance for advising clients on post-Brexit patent enforcement strategies. We consider it likely that the Court of Appeal would uphold this position, should it get to consider the issue, as being in line with the European Court of Justice's decision in BSH-Hausgeräte
• Strategic planning: Clear precedent now exists for handling UK patent aspects within UPC proceedings.  Consider UPC proceedings as a viable option for clients seeking solutions relating to European Patents in non-UPC states such as the UK 
• Amendments: In UPC_CFI_359/2023 the European Patent was found to be invalid as granted or as proposed to be amended.  In UPC_CFI_365/2023 the patent at issue was found valid as granted.  What the position will be should the UPC find a patent valid only as amended during UPC proceedings, we wait to see. In such a case, the scope of the European Patent in a non-UPC state would be different from that of the European Patent being decided upon by the UPC

This landmark decision represents a significant development in European patent law, providing much-needed clarity on the intersection between UPC jurisdiction and UK patent rights in the post-Brexit landscape. Patent holders and practitioners should carefully consider these developments when formulating enforcement strategies across European markets.

For specific advice on how these UPC developments may affect your patent portfolio or defence/enforcement strategy, please contact our Intellectual Property team