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29 January 20252 minute read

UPC: does it have a long-arm jurisdiction over UK European patents?

The Düsseldorf local division of the Unified Patent Court has delivered an important judgment concerning its "long-arm" jurisdiction impacting territories outside its 18 member states in the Fujifilm v Kodak case. The Court confirmed, for the first time, that the UPC has jurisdiction to decide whether UK parts of European Patents have been infringed (or not) provided that the defendant is based in a UPC contracting state.

This is an important development, and something that we have been predicting since launch of the UPC. National European Courts can determine cross-border infringement cases pursuant to Art. 4(1) Brussels Ibis Regulation. This can be disrupted by challenging patent validity in those cross-border territories pursuant to Art. 24(4) Brussels Ibis Regulation. UK Courts exercised this cross-border infringement jurisdiction prior to Brexit (for example, in Coin Controls v Suzo International [1997] F.S.R. 660). Today's judgment simply confirms that the UPC has the same jurisdiction as National European Courts. It is worth mentioning that no injunction was actually awarded, though, because the disputed patent was revoked in Germany and was assumed to be invalid in the UK too.

Deborah Bould commented: "Commercially, this is important for clients either bringing cross-border patent infringement claims against competitors based in UPC states or defending cross-border UPC infringement claims. The patents asserted must have been approved by the European Patent Office and granted in other countries, such as the UK, Spain, Ireland and Norway. We have been waiting some time for the first case confirming the importance of having UK measures in place to counteract the UPC's potential jurisdiction outside its borders, which covers preliminary injunctions and damages."

Rebecca Lawrence commented: "With the UPC gaining in popularity as it wins the trust of patentees across Europe, if this valuable weapon in the armoury becomes a reality it will be another factor in favour of UPC litigation, helping to weigh against the risk of UPC-wide patent revocation."

DLA Piper's UK patent team offers clients a fixed price product for urgent anti-suit injunctions and anti-anti-suit injunctions in the UK tackling parallel UPC proceedings. This is now increasingly relevant.