On 28 January 2025, Unified Patent Court (“UPC”) Düsseldorf Local Division delivered a decision1 in a patent infringement action brought by Fujifilm Corporation (“Fujifilm”) against Kodak GmBH, Kodak Graphic Communications GmBH and Kodak Holding GmBH (together referred as “Kodak”), which also included a counterclaim for revocation of the patent basis of the infringement claims.
The patent in suit is a European patent, in force in Germany and the United Kingdom. On the infringement side, Fujifilm argues that their patent is infringed and asked UPC to prevent Kodak to continue their infringing activities both in Germany and in the UK. So, the question was raised: Does UPC have jurisdiction to hear the infringement action in respect of the UK part of the patent in suit?
In summary, the court ruled that it has jurisdiction to decide the infringement action based on Regulation (EU) No 1215/2012 of The European Parliament (“Brussels Ibis Regulation”2) and the Agreement on a Unified Patent Court (“UPCA”3).
To briefly clarify, Art. 4(1) of Brussels Ibis Regulation sets forth that persons domiciled in a Member State shall, whatever their nationality, be sued in the courts of that Member State. Furthermore, according to Art. 71b/1 of the same regulation, UPC shall have jurisdiction wherever a national court of a Member State would have jurisdiction. So, the court ruled that because the defendants are domiciled in Germany, they can be sued before UPC.
For the invalidation part, the court ruled that there is no need to examine the long-arm jurisdiction of the court because the counterclaim does not include the invalidation of UK part of the patent in suit, though the court also underlined that they “cannot decide on the validity of the UK part”.
Eventually, the patent was revoked for Germany, because it was found to be invalid – though the UK part survived due to jurisdiction rules. However, the court refused the infringement claims both for Germany and UK, on the assumption that the grounds for invalidity in the decision also may apply to the UK part of the patent in suit, and also taken into account that Fujifilm has not commented specifically on the differences between the Contracting Member States and the UK and not explained why these (possibly) lead to a different assessment of the validity of the UK part of the patent in suit.
With this decision, for the first time, UPC has affirmed that, as long as the defendant is domiciled in a UPC contracting state, it has the authority to determine whether or not UK portions of European patents have been infringed.
Possible Impacts in Turkey
This decision could further mean that actions may be brought against and damages can be requested based on activities in non-contracting countries, which are party to European Patent Convention, as long as the basis European patent is valid there and the defendants are domiciled in a UPC member country.
At this point, it should still be noted that because Türkiye is not a party to UPCA, Türkiye has not approved and acknowledged the authority of UPC, which will make the enforcement of any any UPC decision in Türkiye a hurdle.
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2. https://eur-lex.europa.eu/legal-content/EN/TXT/HTML/?uri=CELEX:02012R1215-20150226
3. https://eur-lex.europa.eu/legal-content/EN/TXT/HTML/?uri=CELEX:42013A0620(01)#d1e1166-1-1
