Earlier this week I briefly mentioned the UPC Court of Appeal’s recent decision in Kodak GmbH v. Fujifilm Corp., in regard to whether, on the facts presented, a German defendant was liable as a joint tortfeasor with a related U.K. entity under U.K. law. (The answer was no). The decision also addresses questions pertaining to, among other things, claim construction and the prior user defense under German law, but the most important aspect of the decision is the Court’s rather detailed statement of principles pertaining to its international jurisdiction, under the UPCA, the Brussels I bis Regulation, and the CJEU’s 2025 decision in BSH v. Eletrolux. Here, the lower court had exercised jurisdiction over claims made against three related Kodak defendants domiciled in Germany pertaining to both the German and U.K. designations of a European Patent, and had entered permanent injunctive relief in favor of the patent owner Fujifilm. The Court of Appeal reverses, finding that the German designation is invalid under Germany’s prior user exception, and as I mentioned the other day that the U.K. portion was not infringed by the German defendants. On the way to reaching the latter conclusion, the Court spells out its understanding of when it is appropriate for the UPC to exercise jurisdiction over a claim for the infringement of the portion of a European Patent that pertains to a non-UPC, non-EU, non-Lugano Convention country (such as the U.K.). Below are the introductory headnotes on this topic, which are based on paragraphs 274-291 of the decision, followed by some portions of the decision and a small amount of commentary from me. I plan to write something up about the remaining portions next week.
International jurisdiction
5. Art. 34 UPCA states that “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”. It is not meant to confine the UPC’s jurisdiction to its own territory. Art. 34 UPCA clarifies that as a rule – unless a more limited scope is requested (cf Art. 43, 76 UPCA) – decisions of the UPC shall cover the territory of all Contracting Member States where a European patent has effect.
6. There is no indication that the Contracting Member States when entering into the UPCA wished to confer a more limited jurisdiction to the UPC – confined to its own territory – in situations where the national courts would have extra-territorial jurisdiction.
7. The UPCA is expressly not limited to European patents insofar as validated for the UPC territory only. As such, European patents validated in territories outside the UPC territory is ‘matter governed by the UPCA’.
8. Art. 24(3) UPCA specifically leaves open the possibility that there is a need for the UPCA to apply national law, including that of non-contracting States. The use of ‘in particular’ makes clear that the areas of application of such foreign law is not limited to the matters referred to in the articles mentioned.
9. Where a court has jurisdiction under Article 4 Br I bis because the defendant is domiciled in its territory, as is the case in the present proceedings, the Regulation precludes that court from declining jurisdiction on the ground that a court of a non-Member State would be a more appropriate forum for the trial of the action, even if the jurisdiction of no other Member State is in issue, or the proceedings have no connecting factors to any other Member State (CJEU, judgment of 1 March 2005, Owusu, C-281/02, ECLI:EU:C:2005:120, paras 36 ‒ 46). This approach has recently been endorsed by the CJEU in BSH v Electrolux.
10. Accepting jurisdiction in the infringement action vis-à-vis a defendant domiciled in the UPC’s territory based on Art. 4 Br I bis as such cannot be considered contrary to the TRIPS Agreement.
This last headnote is interesting, in that the corresponding portion of the decision (paras. 288-291) gives short shrift to the defendants’ argument that the TRIPS Agreement precludes courts from adjudicating claims for the infringement of foreign patents (which, if it were so, would substantially undermine BSH). Here are those paragraphs in their entirety:
Accepting jurisdiction is not incompatible with the TRIPS Agreement.
288. Kodak’s argument that this would be contrary to the TRIPS Agreement (Agreement on Trade-Related Aspects of Intellectual Property Rights, signed in Marrakesh, Morocco on 15 April 1994) cannot be accepted. Kodak refers to the WTO appeal in case DS611 between the EU and China, published on 21 July 2025, concerning China’s policy of granting anti-suit injunctions against SEP holders. Kodak argues that a TRIPS Member court would inevitably risk undermining the protection and enforcement of IP rights implemented by the other TRIPS Member in its territory by either (i) imposing inappropriate relief in the territory of that other Member or (ii) not granting the relief actually due in the territory of that other Member, and either way potentially preventing the proper and proportionate enforcement of patent rights in the other Member’s territory due to res judicata issues.
289. Kodak also referred to the reasoning of the MLD in the InterDigital v Amazon proceedings (MLD 30 September 2025, UPC_CFI_936/2025), where it held that the determination of an interim licence encroaches on the patent rights of EU Member States and on the judicial sovereignty of other states.
290. These arguments must also be dismissed.
291. Accepting jurisdiction in the infringement action vis-à-vis a defendant domiciled in the UPC’s territory based on Art. 4 Br I bis as such cannot be considered contrary to the TRIPS Agreement. The CJEU has clarified in BSH v Electrolux that a court which has jurisdiction to hear an infringement action under Article 4 Br I bis does not subsequently lose that due to a later invalidity defence (para 41). Kodak is right in saying that the UK courts have taken a different approach to this, but it is the case law of the CJEU that binds the UPC, not that of the courts of the UK. Accepting jurisdiction if and when conferred on it by Article 4 Br I bis, must be distinguished from how this jurisdiction is subsequently exercised by the Court in view of all the circumstances of the case.
The decision does not mention the EU’s other, pending, action against China, which argues that China’s practice of establishing global FRAND royalties violates Paris Convention article 4bis as incorporated into TRIPS (see here). Nevertheless, as I will be discussing in my pending essay on extraterritoriality and IP rights, I think the UPC Court of Appeal is correct on this issue—as a general matter, the Paris Convention and TRIPS do not preclude courts of member states from adjudicating claims for the infringement of foreign patent rights—though for now I remain open to the possibility that there may an argument against asserting jurisdiction to establish global FRAND royalties on an “as-applied” basis (that is, where doing so is not sufficiently justified on the facts). More to come on this in due time.
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