In the recent case of Fujifilm v Kodak the Unified Patent Court (UPC) Düsseldorf Local Division has asserted it has jurisdiction over the UK part of a European patent, despite the UK not being a contracting state under the UPC. The decision raises critical questions about the reach of the UPC's jurisdiction post-Brexit.

Case Overview

The case revolved around European patent EP 3 594 009, in force in both Germany and the United Kingdom and which pertains to lithographic printing plate technology. Fujifilm accused Kodak of infringing the patent with their products, specifically the SONORA X, SONORA XTRA-2, and SONORA XTRA-3 printing plates. Kodak countered with a revocation claim, challenging the validity of the patent. The UPC Düsseldorf Local Division ultimately ruled in favour of Kodak. The patent was revoked due to insufficient disclosure and lack of novelty and the infringement action was dismissed as the patent was found invalid.

Jurisdiction

The most contentious aspect of the judgment was the court's assertion of jurisdiction over the UK part of the patent, despite the UK not being a contracting state under the UPC. Kodak's defence to the infringement claim included a preliminary objection, arguing that the UPC lacked jurisdiction over the UK part of the patent, given that the UK is not a contracting member state of the UPC. This objection was rooted in the principles of territoriality and the exclusive jurisdiction of national courts over patents registered within their territories.

The UPC dismissed this objection, asserting its jurisdiction based on the domicile of the defendants in a contracting member state. In this case the defendant (Kodak) is domiciled in Germany. The court's rationale was that, given the defendant is domiciled in a UPC member state, the UPC has the authority to hear the infringement action concerning the UK part of the patent.   

It is clear the UPC's rationale was influenced by the Advocate General's opinion in the pending CJEU case BSH Hausgeräte GmBH v Aktiebolaget Electrolux. Although the Advocate General's opinion is not decisive for the present dispute, it provides a broader context for the court's reasoning. For those unfamiliar with the case the relevant issue in BSH Hausgeräte v Electrolux is whether a Swedish court can rule on parts of a European patent not validated for Sweden. The Advocate General believes that a patent infringement action can be asserted at the seat of an EU defendant. If the CJEU agrees, European courts could decide on infringements of non-EU patents, including UK and Turkish patents, within infringement proceedings.

However, in Fujifilm v Kodak as the patent was revoked and the infringement claim failed the UPC did not have to actually decide on the infringement issue in the UK. 

Analysis and implications

The UPC's decision to assert its jurisdiction to non-contracting member states would have significant implications for patent litigation in Europe and the UK. This ruling effectively means that the UPC can adjudicate on the infringement of European patents in non-member states, provided the defendants are based in a member state. This "long arm" jurisdiction could streamline patent enforcement across Europe, reducing the need for parallel litigation in multiple jurisdictions.

Is the UPC's assertion a necessary step towards unified patent enforcement in Europe? Or rather an overreach that could undermine the sovereignty of national courts? The ruling has several important implications:

• Cross-jurisdictional enforcement: Firstly, it challenges the traditional principles of territoriality in patent law, where the jurisdiction of courts is typically confined to the territories where the patents are registered. This means that a patent granted in a specific country can only be enforced within that country's borders, and legal actions related to that patent must be brought in the courts of that country. By asserting jurisdiction over the UK part of the patent, the UPC could be setting a precedent that could lead to jurisdictional conflicts and complicate the enforcement of patent rights. There are also practical and legal questions on how enforcement of a UPC decision would work in non-member states?
• Harmonisation: The decision could have broader implications for the relationship between the UPC and national courts in non-member states. While the UPC can rule on infringement issues, it cannot revoke the UK part of the patent. This creates a scenario where the UPC's decisions on infringement could be at odds with the validity determinations of national courts, leading to legal uncertainty and potential conflicts. Although in this case the UPC commented that the UK court is unlikely to challenge the UPC's decision on validity if a challenge were brought in the UK.
• Streamlined litigation: The influence of the Advocate General's opinion in BSH Hausgeräte v Electrolux suggests that the UPC's jurisdiction could extend beyond the territories of contracting member states in certain circumstances. This interpretation aligns with the UPC's goal of providing a comprehensive and efficient forum for patent litigation in Europe. For patent holders, the UPC's long arm jurisdiction could simplify enforcement and reduce costs by allowing them to pursue infringement claims in a single forum. However, for defendants this could mean facing litigation in jurisdictions where they have limited presence, increasing their legal risks and costs. 

Conclusion

The UPC's decision in Fujifilm v Kodak marks a significant development in European patent law, with far-reaching implications for jurisdictional issues post-Brexit. While the ruling aims to streamline patent enforcement and provide a unified forum for litigation, it raises critical questions about the balance between a unified process and national sovereignty. While the patent community continues to grapple with these issues, the UPC's long arm jurisdiction will undoubtedly remain a topic of intense debate and scrutiny.