UK Trends and Developments Contributed by: Matthew Howell, Jamie Rowlands, Greg Ward and James Ward, Haseltine Lake Kempner
Member State in which the defendant is domi - ciled have, in principle, jurisdiction in an infringe - ment action brought against that defendant by the holder of a patent granted or validated in a third State which is domiciled in another Mem - ber State. In addition, the jurisdiction of the court of the Member State thus seised does, in prin - ciple, by virtue of that general rule, extend to the question of the validity of that patent raised as a defence in the context of that infringement action”. “If a court of a Member State is seised, on the basis of Article 4 (1) of that regulation, of an action alleging infringement of a patent granted or validated in a third State in which the ques - tion of the validity of that patent is raised, as a defence, that court has jurisdiction, pursuant to Article 4 (1), to rule on that defence, its decision in that regard not being such as to affect the existence or content of that patent in that third State or to cause the national register of that State to be amended”. The effect of these findings is that, in cases where the defendant is domiciled in an EU mem - ber state, a court of that EU member state has jurisdiction to decide not just on infringement of a patent granted or validated in a non-EU state, but also on the validity of that patent, where invalidity of the patent is raised as a defence. However, the EU court’s finding on validity can - not affect the existence or content of the patent (eg, through amendments to, or revocation of, the patent) or the national register of the state in which the patent was granted or validated. That is, the EU court’s findings on validity apply only to the parties in the case brought before it. As Article 71a establishes the UPC as a common court having equivalent jurisdiction to a national court of an EU member state, the CJEU’s deci -
sion has significant implications for the jurisdic - tion of the UPC. In particular, the CJEU decision supports the long-arm jurisdiction of the UPC, as it suggests that the UPC has jurisdiction over issues of infringement of national parts of European pat - ents in states that do not participate in the UPC system, if the defendant is domiciled in a UPC participating state. The UPC also has jurisdic - tion over issues of infringement and validity (if raised as a defence) of national parts of Euro - pean patents in states outside the EU. However, the UPC’s decision on the validity of the patent in such a non-participating state would not have any effect on the patent or the national register in that non-participating state. Relevant decisions and orders of the UPC The UPC has begun to assert its long-arm juris - diction in practice, as evidenced by several notable decisions and orders issued by the UPC in the first half of 2025. Fujifilm v Kodak This decision (UPC_CFI_355/2023) was issued by the Düsseldorf Local Division on 28 January 2025 (before the decision of the CJEU in BSH Hausgeräte GmbH v Electrolux AB). In this case, Fujifilm sued a group of German- based Kodak companies for infringement of European patent No EP3594009, relating to lithographic printing plates, which was validated after grant in Germany and the UK. Kodak counterclaimed for revocation of the pat - ent, and argued that the UPC did not have juris - diction to rule on infringement of the UK national validation of the patent, as the UK is not a con - tracting state to the UPCA.
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