Fujifilm v. Kodak: The Court of Appeal confirms UPC’s long-arm jurisdiction outside its territory
On June 2, 2026[¹] (and further affirmed on July 13, 2026[²]), the Court of Appeal of the Unified Patent Court (UPC) confirmed – among others – in its decision in the case Fujifilm v Kodak the long-arm jurisdiction of the UPC for Member States of the EPO that are not Contracting Member States of the Unified Patent Court Agreement (UPCA, e.g. UK, Switzerland, Spain, Poland, Greece, Ireland).
This international jurisdiction of UPC means that the Court may, under certain conditions, rule on patent infringements of the national parts of a European patent in non-UPC Member States. Prerequisite for this is, that the defendant is domiciled in a UPC Member State (Art. 4 (1), 71b (1) Recast Brussel I Regulation). The UPC’s international jurisdiction derives from the Brussels Recast Regulation as confirmed in the CJEU’s ruling in BSH Hausgeräte v Electrolux.
According to the decision, in cases where the Court has jurisdiction under Article 4 Brussels I Recast because the defendant is domiciled in its territory, it cannot decline jurisdiction on the ground that a court of a non-Member State would be a more appropriate forum for the trial of the action in issue (“forum non conveniens”, see CJEU, judgment of 1 March 2005, Owusu, C-281/02, ECLI:EU:C:2005:120, paras 36 – 46). Subsequently, where the defendant is EU-domiciled, the UPC will hear the case.
However, the Court of Appeal drew a distinction between the existence of its jurisdiction and its exercise and emphasized that UPC must apply this international jurisdiction moderately. According to the Court “a court which has jurisdiction to hear an alleged infringement of a patent validated outside of its own territory, is not only required to apply the law applicable to that patent but must also apply international law principles such as comity”.
Furthermore, the decision provided, for the first time, a general framework, including rules governing the UPC’s international jurisdiction over European patents outside its territory. The Court presented in detail the approach it considers in line with BSH Hausgeräte v Electrolux and international principles of law, including comity, for various situations where non-UPC designations are involved and validity is disputed, as follows:
Scenario I
A stand-alone revocation action against a non-UPC designation of an EU/LC patent[³]
In this case the Court has no jurisdiction to decide the action.
Scenario II
When a UPC territory patent is considered invalid (but would have been infringed if it were valid) and the infringement proceedings are also based on a non-UPC designation
In this scenario the Court considers appropriate to first offer the patentee the opportunity to withdraw its infringement action based on the non-UPC designation “within an appropriate period of time”.
In case the patentee does not wish to withdraw the infringement action, then:
For non-UPC designation countries which are EU Member States or Contracting States to the Lugano Convention. (e.g. Spain or Switzerland):
Art. 24 Brussels I Recast and Art. 22 LC prevent the UPC from assessing validity, but – following BSH v Electrolux – it keeps jurisdiction over the infringement claim.
Therefore, it is appropriate for the Court to give the defendant the opportunity to file a revocation action with the relevant competent national court(s) within an appropriate period of time. Furthermore, it is also considered generally appropriate for the Court to stay the infringement proceedings (based on that EU/LC EP(s)) until the final decision on the revocation action(s) has been rendered.
In case the defendant does not lodge such a revocation action within the given period of time, the Court must assume that the patent(s) is/are valid and shall decide the infringement action on that basis.
For non-EU/non-LC EPs (e.g. the UK)
In this case, if the patentee does not wish to withdraw the infringement action, the infringement action shall be dismissed, unless there are specific reasons not to do so (e.g. because the claim(s) of an extra-territorial part is different and may be considered valid – in such a situation applies the following scenario iii).
Scenario III
Where a UPC territory patent is found valid and infringed in infringement proceedings which also rely on a non-UPC designation
In this case the Court may – in order to avoid undue delay – issue a decision, including its orders, covering the non-UPC designation under a “condition subsequent”: that the competent national court does not later hold the patent wholly or partially invalid (R. 118.2 RoP and Solvay v Honeywell (C-616/10) mutatis mutandis).
If the competent national court holds the patent to be valid, then the decision, including its orders, becomes permanent, whereas, if the patent is considered wholly or partially invalid (to the extent the infringement is based thereon), then the condition under which the decision, including its orders, was issued is not fulfilled and it falls away. In the latter case, the patentee may request the Court for orders consequential on such a decision within two months of the decision of the competent national court (R. 118.4 RoP), including a request for a stay of the proceedings until a final decision is rendered by the competent national court.
In conclusion, Fujifilm v. Kodak is a significant decision for the international jurisdiction of the UPC. The option of the conditional order, which was adapted by the Court of Appeal, enables UPC to grant a meaningful relief covering non-UPC territories, without waiting for the decision of the competent national courts. This mechanism of “condition subsequent” offers UPC the opportunity to grant a timely and geographically broad relief with one action (decision / order), while respecting the exclusive jurisdiction of national courts over their own patents. Consequently, while the UPC’s international jurisdiction over European patents outside its territory does exist, it is subject to strict limitations rather than being automatic.
Author: Dr. Olga Michala
E-Mail: michala@paustian.de
[¹] UPC_CoA_312/2025, UPC_CoA_333/2025, UPC_CoA_880/2025, UPC_CoA_882/2025
[²] UPC_CoA_473/2025, UPC_CoA_474/2025, UPC_CoA_873/2025, UPC_CoA_881/2026
[³] EU Member States or Contracting States to the Lugano Convention