The concept of “long-arm jurisdiction”, a court’s authority to adjudicate on alleged infringement of patents registered in countries outside its own jurisdiction, has become one of the defining and perhaps most controversial aspects of the UPC’s emerging jurisprudence. A sequence of decisions over the past eighteen months has seen an expansion of the UPC’s jurisdiction, with questions recently being referred to the CJEU on the matter of provisional measures (see our earlier article “How long are the arms of the UPC? UPC Court of Appeal’s first referral to the CJEU”). However, the practicalities and limits of the UPC’s long arm expansion are becoming more defined, particularly following the recent Court of Appeal decision in Fujifilm v Kodak.

The UPC’s embrace of long-arm jurisdiction

In February 2025, the Court of Justice of the European Union (CJEU) handed down a pivotal ruling in BSH v Electrolux (C-339/22) finding that the court of an EU member state in which the defendant is domiciled, has jurisdiction to hear a patent infringement action concerning a patent granted in another EU member state or in a non-EU member state. The court came to a different position with respect to questions of validity, where jurisdiction to officially declare a patent invalid lies exclusively with the courts of the country where the patent is registered. In practical terms, this decision sets the precedent for patentees to consolidate multi-country infringement claims in a single forum, with bifurcated proceedings being necessary for defendants to plead invalidity of the patent(s) in question.

Following BSH v Electrolux, the UPC’s Local Divisions sought to apply the CJEU’s decision, such as in IMC v MUL-T-Lock, which ultimately found that the UPC was competent to hear infringement actions with respect to non-UPC European patent designations, even those outside of the EU and broader European socioeconomic frameworks, such as the European Economic Area (EEA). There has been some resistance to the expanding reach of the UPC’s long arm, such as where a defendant is domiciled in a non-UPC jurisdiction (Adobe Inc et al v KeeeX SAS). However, the UPC Court of Appeal has now affirmed the UPC’s competence to hear infringement actions with respect to non-UPC designations of European patents where the defendant is domiciled in a UPC contracting member state.

Background: Kodak’s preliminary injunction 

Fujifilm brought infringement proceedings before the Mannheim Local Division against three German entities in the Kodak group, alleging infringement of European Patent 3511174. The Local Division Mannheim maintained the patent in amended form and found infringement not only in Germany but also in the United Kingdom (a non-UPC designated state). Kodak subsequently appealed the decision.

UPC Court of Appeal affirms international jurisdiction

In arriving at its decision, the UPC Court of Appeal overturned the first instance decision on infringement. However, it also ruled on the UPC’s jurisdiction to adjudicate patent infringement claims relating to the UK designation of the European patent.

Despite Kodak’s arguments to the contrary, the Court of Appeal concluded that the wording of Article 34 Unified Patent Court Agreement (UPCA) did not restrict the UPC’s jurisdiction to the UPC designated member states only. In this regard, Article 34 UPCA states that “[d]ecisions 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”. Nevertheless, in applying the Brussels Regulations, the court held there was no indication that contracting member states, entering into the UPCA, wished to confer a more limited jurisdiction to the UPC. In the present case, the nominated Kodak entities are domiciled in a UPC contracting member state (Germany). As a consequence, the court held that, in principle, it had competency to adjudicate infringement claims relating to national parts of a European patent outside the UPC territory.

When setting out the principles by which the UPC should exercise its jurisdiction, the Court of Appeal presented a framework that was compliant with BSH v Electrolux to be adopted by the UPC divisions in relation to actions brought in relation to non-UPC EU/Lugano Convention European patent(s) and/or non-UPC non-EU/non-Lugano Convention European patent(s), such as the UK.

1. Revocation actions

In relation to standalone revocation actions, the UPC shall declare that it lacks jurisdiction to decide the action. This is based upon the principle in BSH v Electrolux that jurisdiction to decide on validity lies exclusively within the court of the country in which the patent is registered.

2. Infringement actions (patent infringed if valid)

When a UPC designated patent is found invalid, but would have been infringed if valid, and infringement proceedings also rely on a non-UPC designated patent, the patentee should be offered the opportunity to withdraw their claim of infringement in the non-UPC territory. If the patentee does not do so, the outcome is dependent on whether the non-UPC designated state is an EU member state or signatory to the Lugano Convention.

For European patents in non-UPC but EU or Lugano Convention territories, the UPC can give the defendant the opportunity to file a revocation action with the relevant competent national court, if one is not already pending. If a revocation action is already pending, the UPC can use its discretion to stay the infringement proceedings until a final decision has been rendered in the national revocation action. However, if the defendant does not lodge a revocation action before the national court, the UPC must assume the patent is valid and shall decide the infringement action on that basis.

For non-UPC and non-EU/non-Lugano Convention European patents, the infringement action will be dismissed, unless there are specific reasons not to do so (for example, if the claims in the non-UPC territory are different to that of the UPC designated claim).

3. Infringement actions (patent infringed & valid)

If the patent in force in the non-UPC territory is considered valid and infringed in the UPC territory, the UPC may issue conditional orders, depending on whether the patent is held to be wholly or partially invalid by the competent national court.

In the present case, the Court of Appeal found that a UK based Kodak company (Kodak Ltd) held the title to the alleged infringing articles, rather than one of the German-based Kodak entities party to the UPC proceedings. While the Court of Appeal confirmed that the UPC’s jurisdiction extends to claims of “joint tortfeasorship”, such liability must be established under the applicable national law. This was not demonstrated in the present case and the court nevertheless found that the UK designation of the patent was not infringed.

Maturing doctrine with strategic considerations 

The Court of Appeal’s decision undoubtedly clarifies a stakeholder’s position where it comes to pan-European relief through a single UPC infringement action. While there are caveats, the UPC is actively embracing its role in cross-border patent litigation within Europe.

The Court of Appeal’s decision is ostensibly patentee friendly, allowing for timely and geographically broad relief from the UPC, notwithstanding the fact that national courts will ultimately retain the final word on the validity of their patents. For defendants, contesting the substance of alleged infringement is now more important than ever as any decision from the UPC could have wider-reaching implications. As the Court of Appeal’s framework establishes the basis upon which infringement claims in non-UPC jurisdictions can be assessed, disputing said claims on the basis of non-infringement only has become an increasingly risky strategy. Defendants of UPC infringement actions, particularly those claiming infringement in non-UPC jurisdictions, should therefore be considering counterclaims of revocation as part of their defence strategy against a UPC infringement action.

The established case law is consistent where the court’s extraterritorial reach flows from the defendant’s domicile, not necessarily from where patents are registered or where the claimants are based. Therefore, determining whether the correct defendant is identified in the infringement proceedings is imperative. For now, the UPC’s long arm still ends at the border for defendants of UPC infringement actions, providing they are domiciled outside of a UPC member state and there is no UPC-domiciled “anchor” defendant to join the proceedings. However, there is a growing appetite to test how far long arm jurisdiction can be pushed. Indeed, the UPC’s inaugural referral of questions to the CJEU (C-196/26) may shed light on how far the reach extends to non-EU defendants and what role EU-domiciled group entities or authorised representatives play in terms of anchoring the primary defendant to infringement actions within the UPC’s jurisdiction. For now, we will continue to review and report on any updates as events unfold.

Related articles

• Claim interpretation: emerging trends on what “consulting the description/drawings” in G1/24 may mean:
  https://dycip.com/g124-claim-interpretation-consult  
• G1/24 and claim interpretation: consulting the description/drawings may broaden a claim:
  https://dycip.com/g124-claim-description  

Case details at a glance

Decision level: UPC Court of Appeal
Parties: Kodak GmbH et al v Fujifilm Corporation
Citation: UPC-CoA-312/2025
Date: 02 June 2026
Decision: https://dycip.com/upc-coa-312-2025  

Decision level: UPC Court of Appeal
Parties: Kodak GmbH v Fujifilm Corporation
Citation: UPC-CoA-880/2025
Date: 02 June 2026
Decision: https://dycip.com/upc-coa-880-2025 

Decision level: UPC Court of Appeal
Parties: Kodak GmbH et al v Fujifilm Corporation
Citation: UPC-CoA-333/2025
Date: 02 June 2026
Decision: https://dycip.com/upc-coa-333-2025  

Decision level: UPC Court of Appeal
Parties: Kodak GmbH v Fujifilm CorporationCitation: UPC-CoA-882/2025
Date: 02 June 2026
Decision: https://dycip.com/upc-coa-882-2025 

Decision level: UPC Paris Local Division
Parties: Mul-T-Lock France, Mul-T-Lock-Suisse v IMC Creations
Citation: UPC_CFI_702/2024 
Date: 21 March 2025
Decision (PDF): https://dycip.com/upc-cfi-702-2024 

Decision level: UPC Court of Appeal
Parties: Adobe Inc et al v KeeeX SAS
Citation: UPC_CoA_922/2025, UPC_CoA_923/2025, UPC_CoA_924/2025 & UPC_CoA_925/2025
Date: 13 March 2026
Decision: https://dycip.com/upc-coa-922-2025 

Decision level: UPC Local Division Mannheim
Parties: Kodak GmbH et al v Fujifilm Corporation
Citation: UPC_CFI_365/2023
Date: 18 July 2025
Decision: https://dycip.com/upc-ord-33199-2025 

Decision level: CJEU
Parties: Dreame International 
Citation: C-196/26
Date: 11 March 2026
Referral: https://dycip.com/cjeu-c196-26