In a recent decision dated 18 July 2025, the Mannheim Local Division of the Unified Patent Court (UPC) has issued an injunction against Kodak in the United Kingdom. This is the first time we have seen the UPC injunct a party in the UK, which is not a signatory of the Agreement on a Unified Patent Court (UPCA), nor an EU member state. The UPC therefore continues to establish its ‘long-arm’ jurisdiction. We note, however, that at the time of writing the decision remains open to appeal.
Background
The claimant, Fujifilm, brought proceedings against Kodak for alleged infringement of European patent EP 3511174 B1 before the UPC, relating to planographic printing plates. The claimant sought relief in view of infringing acts in all the EPC contracting states. However, in all states except Germany and the UK, the claimant’s patents lapsed in 2021.
In a first ruling in this case, dated 2 April 2025, the UPC found that it had no jurisdiction over the national parts of European patents which had lapsed prior to the entry into force of the UPCA (1 June 2023).
In the same ruling, an amended claim 1 was found to be valid and infringed in Germany, with the UPC issuing an injunction in Germany and awarding damages to Fujifilm based on the German part of the European patent. However, there were significant jurisdictional issues to be resolved in relation to the UK part, since the UK is an EPC member state, but is neither a UPC nor an EU member state. Therefore, on the same day, a procedural order separated the proceedings relating to the UK part and delayed them until after a European Court of Justice (ECJ) Decision (C-339/22 BSH Hausgeräte v Electrolux) relating to the jurisdiction of EU courts.
How did we get here? Mul-T-Lock (UPC_CFI_702/2024) and BSH Hausgeräte (C-339/22)
As summarised our previous article on Mul-T-Lock France & Mul-T-Lock Suisse vs. IMC Creations, the UPC has previously decided that, where a defendant is domiciled in the EU, in view of the ECJ’s decision in BSH Hausgeräte, it has jurisdiction over infringement actions in relation to national parts of European patents in non-UPC EU member states such as Spain, and even in non-EU member states such as Switzerland which are signatories of the Lugano Convention.
The Paris Local Division went further, ruling that, in respect of ‘third-states’ such as the UK, the UPC has jurisdiction to give binding decisions not only on infringement but also on validity that are effective inter partes, that is binding on the parties litigating the action before the UPC.
Decision in the present case – injunction and damages in relation to activities in the UK
The present case is now the first case we have seen in which the UPC has explicitly decided on infringement of the UK part of a European patent and as a result issued an order for injunctive relief and damages for activities in the UK. In particular, the Mannheim Local Division found that in the absence of a bilateral convention between the United Kingdom and a member state of the UPCA stipulating that the courts of the United Kingdom had exclusive jurisdiction over disputes relating to the validity of European patents validated in the United Kingdom, then there was no reason not to follow the ruling in BSH Hausgeräte.
Having decided that the Court did have jurisdiction to rule on infringement of the UK part, the Court awarded an injunction and damages to Fujifilm in view of Kodak’s activities in the United Kingdom, following the same construction and infringement analysis as in relation to the German part in the earlier decision of 2 April 2025. Moreover, it was clarified that in such a case the defendant is allowed to raise an invalidity defence before the UPC without being obliged to file a national action for revocation in the UK, though the decision on infringement and validity in the UK has only inter partes effect. As such, the Court also confirmed that there is no legitimate interest of a defendant obtaining a declaration that the UK part is invalid, since such declaratory relief is not binding on the national authorities.
The decision also follows the Dusseldorf Local Division’s decision in UPC_CFI_355/2023 between the same parties, discussed previously in our article here.
Summary
Regardless of the UK’s non-membership of the UPC, the UPC continues to consider itself competent to decide on infringement and validity for all parts of a European patent where a defendant is domiciled in the EU, in this case for the first time issuing an injunction against activities in the UK. That being said, the Court continues to acknowledge that it does not have jurisdiction to actually revoke the validated national part of a European patent in a non-EU, non-UPC state such as the UK, where its decision only has effect between the parties themselves.
It therefore appears that, in the absence of an opt-out, the UK part of a European patent may still form the subject of infringement proceedings before the UPC against EU-domiciled companies and individuals, and the patentee may seek corresponding relief for activities in the UK.
Boult and the UPC
With over 50 UPC Representatives, the team at Boult are able to advise on UPC matters across a vast number of subject areas. If you would like to discuss any of the issues raised by this decision, get in touch with your usual Boult attorney, or email boult@boult.com.
