Fujifilm v Kodak | UPC Court of Appeal, 2 June 2026 | UPC_CoA_312/2025, UPC_CoA_333/2025, UPC_CoA_880/2025, UPC_CoA_882/2025
On 2 June 2026, the Court of Appeal of the Unified Patent Court (UPC) issued a landmark decision in the Fujifilm v Kodak case, addressing one of the most consequential and unsettled questions in European patent litigation: the extent to which the UPC may exercise jurisdiction over EP designations in territories outside the UPC’s own Member States, the so-called “long-arm jurisdiction”. Building on the CJEU’s seminal BSH Hausgeräte v Electrolux ruling of February 2025, the Court of Appeal has provided courts of first instance with a detailed and practical framework for handling cross-border patent disputes. This decision is essential reading for any patent holder or defendant active across multiple European markets.
The foundation: Long-arm jurisdiction confirmed
The Court of Appeal unequivocally confirmed that the UPC’s jurisdiction over defendants domiciled in a UPC Member State is not confined to the territory of its own Contracting Member States, but extends to extraterritorial EP designations.
The starting point is Article 4 in conjunction with Art 71b Brussels Ia Regulation: where a defendant is domiciled in a UPC Member State, the UPC has jurisdiction, including over alleged infringements of EPs occurring outside the UPC territory, such as in the United Kingdom. This cross-border jurisdiction is not in conflict with Article 34 UPCA, which the Court of Appeal clarified is not a limitation but rather a general rule of scope, covering all Contracting Member States for which a European patent (EP) has effect, without the word “only” restricting the possible scope of UPC decisions to UPC territory.
Crucially, the UPC as a national court cannot decline jurisdiction on forum non conveniens grounds simply because the courts of a non-Member State (such as the UK) might be considered more appropriate. This principle, established by the CJEU in Owusu (C-281/02) and reaffirmed in BSH v Electrolux, is equally binding on the UPC.
The Court of Appeal further confirmed that accepting jurisdiction over non-UPC designations is not contrary to the TRIPS Agreement. It dismissed Kodak’s argument that the UPC’s adjudication would undermine the IP enforcement of other TRIPS members, clarifying that jurisdiction under Article 4 Brussels Ia must be distinguished from how that jurisdiction is subsequently exercised.
The key distinction: EU/Lugano non-UPC vs. Non-EU/Lugano designations
At the heart of the Court of Appeal’s framework for exercising its cross-border jurisdiction is a critical distinction between two categories of extra-territorial EP designations:
- EU/Lugano non-UPC EPs: EP designations in the territories of EU Member States or states party to the Lugano Convention, but not in the territory of the UPC Member States (*Note: The Lugano States are Switzerland, Norway, Iceland. Non-UPC EU countries include, for example, Croatia, the Czech Republic, Ireland, Poland, Slovakia, and Spain) Following Article 24(4) Brussels Ia and BSH v Electrolux, the UPC shall not assess the validity of these EP designations. However, and this is significant, the UPC does not lose jurisdiction to decide the infringement action on this basis.
- Non-EU/Lugano EPs: EP designations in third countries (such as the UK post-Brexit, Serbia or Turkey). Here, the UPC can assess validity inter partes and decide the infringement action on that basis — subject always to the principles of comity.
This distinction has direct practical consequences for how first-instance divisions must handle cases and manage proceedings.
A structured playbook for first-instance courts and for parties
The most immediately practical contribution of this decision is the Court of Appeal’s step-by-step guidance for first-instance divisions when faced with infringement actions covering extra-territorial EP designations. The Court of Appeal sets out three scenarios:
Scenario I: Standalone revocation action regarding extra-territorial EPs
Where a revocation action is brought before the UPC targeting non-UPC EU/Lugano EPs or non-EU/Lugano EPs (as opposed to raising invalidity as a defence in an infringement action), the UPC shall declare that it lacks jurisdiction to decide the action.
Scenario II: Infringement action where the UPC-territory EPs are held invalid
If the UPC-EPs are found invalid in UPC proceedings, but the attacked product would infringe if the EP designations were valid, the Court of Appeal prescribes the following graduated approach:
1. The patentee must first be offered the opportunity to withdraw the cross-border claims within an appropriate period.
2. For EU/Lugano non-UPC EPs: if the patentee declines, the defendant should be given the opportunity to file a revocation action before the competent national court(s). If such proceedings are filed or already pending, the UPC should generally stay the infringement proceedings in relation to those EPs until a final national decision is rendered (using its case management powers under Rule 295(l) and (m) RoP). If the defendant fails to act within the given period, the respective EP is presumed valid and the infringement action is decided on that basis.
3. For non-EU/Lugano EPs: if the patentee does not withdraw, the infringement action based on those designations shall be dismissed, unless there are specific reasons to the contrary.
Scenario III: Infringement action where the UPC-territory EPs are valid and infringed
This is the scenario with the most significant practical implications for patentees. Where the UPC-territory EPs are found valid and infringed:
- The Court may issue cross-border orders under a condition subsequent, where there is a reasonable, non-negligible possibility that the extra-territorial EPs will also be upheld by the competent national courts. This applies to both non-UPC EU/Lugano EPs (where validity shall not be examined) and non-EU/Lugano EPs (applying comity principles), drawing on Rule 118.2 RoP and the Solvay v Honeywell (C-616/10) approach mutatis mutandis.
- If the national court upholds the EP’s validity, the conditional cross-border orders remain in place and may, upon a final decision, become permanent.
- If the national court finds the patent wholly or partially invalid, the conditions fall away and the cross-border orders lapse accordingly. In this case, the patentee may apply to the UPC for consequential orders within two months of the national decision, including a request for a stay of the respective cross-border proceedings (Rule 118.4 RoP).
What does this mean for EP holders and defendants?
This decision fundamentally shapes the strategic landscape for both patentees and accused infringers:
For patent holders, the decision opens the door to pan-European enforcement through a single UPC action, including against UK designations, where the defendant is domiciled in a UPC Member State. The conditional order mechanism of Scenario III offers a powerful tool to obtain timely and geographically broad relief, even while national validity proceedings are pending.
For defendants, the decision underscores the importance of proactively filing national revocation actions once a cross-border UPC action is pending against them, particularly for non-UPC EP designations. Failure to do so within the period set by the UPC may result in a validity presumption being applied against them. At the same time, the limitation of the UPC’s reach for standalone revocation actions over non-UPC EP designations provides a degree of procedural protection.
For both parties, comity remains a live and consequential principle: the UPC will exercise its cross-border jurisdiction with care, and the conditional order mechanism is designed precisely to respect the primacy of national courts on questions of validity for their own registrations.
Conclusion
The Fujifilm v Kodak decision of 2 June 2026 is a milestone in the development of UPC jurisprudence. It translates the abstract principles of BSH v Electrolux into concrete procedural guidance and firmly establishes the UPC as a forum capable of addressing patent disputes with true pan-European reach. Parties structuring litigation strategies around European patent portfolios should carefully consider this framework when deciding where and how to bring or defend infringement actions.
