In the case of Kodak vs. Fujifilm concerning EP 3 511 174 on 2 June 2026 before the Court of Appeal of the Unified Patent, the Court of Appeal addressed the UPC’s jurisdiction over the UK designation of a European patent. The decision is important because it applies the CJEU’s reasoning in BSH v Electrolux to a non-UPC and non-EU designation, while separating jurisdiction for infringement from jurisdiction for revocation.
Background
Fujifilm brought infringement proceedings before the Mannheim Local Division based on EP 3 511 174, concerning lithographic printing plate precursors, with effect for Germany and the United Kingdom. Kodak counterclaimed for revocation. The Local Division found the amended German designation valid and infringed and later held that it also had jurisdiction over the UK designation. Kodak appealed both the German and UK parts of the case.
The Court of Appeal upheld the patent’s validity and found infringement of the German designation, but the case is particularly significant for its treatment of the UK designation.
UPC jurisdiction over non-UPC designations
The Court of Appeal held that Article 34 UPCA does not confine the UPC’s jurisdiction to UPC territory. Rather, it defines the territorial reach of UPC decisions for European patents in Contracting Member States. It does not exclude jurisdiction over infringement claims concerning a European patent designation in a non-UPC state where jurisdiction follows from the Brussels I bis Regulation.
On that basis, the UPC could hear infringement claims against defendants domiciled in UPC territory in relation to the UK designation of the patent. The Court relied on the principle that a court with jurisdiction under Article 4 Brussels I bis may not decline jurisdiction merely because a non-Member State court would be a more appropriate forum. The Court also considered that accepting jurisdiction over infringement was not contrary to TRIPS.
The Court drew a clear limit, however, for revocation. The UPC could not revoke the UK designation. For revocation of a patent designation in a non-UPC state, jurisdiction remains with the competent national authority or court.
Exercise of jurisdiction and conditional relief
The Court then considered how UPC jurisdiction should be exercised where validity of a non-UPC designation is raised. It set out a structured approach for EU/Lugano and non-EU/Lugano designations, including the position where a national revocation action has been or may be brought.
Where the patent is considered valid and infringed in the UPC territory, the Court may, if appropriate, issue relief for the non-UPC designation under a condition subsequent. This requires a reasonable, non-negligible possibility that the competent national court will uphold the patent. If the national court later finds the patent wholly or partly invalid to the relevant extent, the UPC order falls away accordingly.
This mechanism allows the UPC to avoid undue delay while respecting the competence of the national court on validity. The decision therefore confirms, on these facts, that UPC infringement relief for a UK designation is possible, but remains dependent on the status of validity before the competent UK forum.
Other points in the decision
The Court also addressed non-public and public prior use. On public prior use, Kodak’s late evidence was not admitted on appeal; the Court considered that even if admitted, it would probably not have changed the assessment because the relevant pore-diameter ratio was not shown to fall within the claim.
For inventive step, the Court held that EP’452 was not a realistic starting point for solving the patent’s problem of suppressing appearance failure. Improved scratch resistance was treated as a bonus effect, not as the problem defining the starting point. The reasoning underlines that an additional advantage disclosed in the patent should not be allowed to reframe the objective starting point where it was not the problem addressed by the invention.
Analysis and implications
The decision illustrates that the UPC may become a forum for infringement disputes extending beyond UPC territory, at least where defendants are domiciled in UPC territory and the claim concerns national designations of the same European patent. It also shows the limits of that jurisdiction: the UPC may decide infringement and remedies, but not revoke a non-UPC designation.
The conditional-order approach is likely to be practically significant. It gives patentees a route to timely relief for non-UPC territories, while giving defendants a path to challenge validity before the competent national court. The order’s continued effect depends on the outcome of that national validity challenge.
