Update on ECJ ruling C-339/22: Current case law of the UPC on “long arm jurisdiction”

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The pioneering decision of the UPC in Düsseldorf on “long arm jurisdiction” and the first UPC judgment with UK-specific injunction in the Fujifilm v. Kodak cases illustrate the implementation and further development of the EGJ’s guiding principle and create a new dynamic for cross-border patent litigation in Europe and beyond.

Introduction

The highly anticipated ECJ ruling C-339/22 (BSH-Hausgeräte v Electrolux) redefined and significantly expanded international jurisdiction for patent disputes at the beginning of 2025. Since then, experts have been wondering how “long arm jurisdiction” will be applied in practice by national courts and, in particular, by the Unified Patent Court (UPC). Recent decisions by the UPC, notably in the Fujifilm v. Kodak cases before the chambers in Düsseldorf and Mannheim, provide the first concrete examples of how the ECJ’s guiding principle is being implemented and further developed.

ECJ C-339/22 – The framework

The ECJ clarified that, based on the general rules of jurisdiction in the Brussels Ia Regulation, courts of an EU member state can, in principle, sue the holder of a European patent for injunctive relief and damages against defendants anywhere in the world if the defendant is itself based in the EU. The traditional, close link between jurisdiction and the country in which the patent was granted (lex loci) therefore no longer applies without restriction in cases of infringement. Only genuine actions for a declaration of invalidity with effect “erga omnes” remain reserved to the country of origin.

Practical test: UPC and the UK parts of European patents

Düsseldorf: Pioneering decision on “long arm jurisdiction”

On January 28, 2025, the Düsseldorf Local Chamber ruled in the dispute between Fujifilm and Kodak (UPC_CFI_355/2023) that the UPC also has jurisdiction to rule on the infringement of the UK part of a bundle patent. Although the UK component of the patent was not directly the subject of the nullity action and the patent was ultimately declared invalid, the Chamber (following the guidelines of the ECJ) set new standards with regard to the scope of the UPC’s jurisdiction: It is sufficient for all defendants to be domiciled in a UPC contracting state in order to be able to assert infringement of the UK part of the patent in UPC proceedings. For a substantive decision on infringement, the question of the validity of the UK part can be examined in advance by the UPC as a “prerequisite,” but this does not have binding effect on the UK patent register .

Mannheim: First UPC judgment with UK-specific injunction

The final, practice-relevant implementation has now been effected by the Mannheim Local Chamber (UPC_CFI_365/2023, July 18, 2025), also in the Fujifilm v. Kodak dispute (concerning another EP patent of Fujifilm). It recognized its jurisdiction to assess the patent infringement and, for the first time, issued an injunction against German subsidiaries of Kodak with regard to the UK component of an EP bundle patent.

Key findings:

  • The UPC has jurisdiction over infringement of the UK validation if the defendants are based in a UPC contracting state – exact implementation of the ECJ’s requirements.
  • The UPC only examines the protectability of the UK patent “inter partes” as a prerequisite for infringement, but this has no effect on the UK register (no “erga omnes” effect).
  • No obligation for the defendant to bring parallel national nullity proceedings in the UK to challenge the patent. The defense in the UPC proceedings is sufficient.
  • Only if parallel nullity actions are pending in the UK can the UPC proceedings be suspended.
  • The operative part was explicitly drafted in accordance with UK substantive law; the calculation of the claim for damages and the ancillary consequences (including destruction and information) are also based on UK patent law .

Impact and open questions

  • Increased scope for patent holders: In future, they will be able to assert comprehensive claims (including in the UK!) before a European special court if the infringer is based in a UPC state.
  • No UK registry entry: Although the UPC’s decision is enforceable with regard to injunctive relief and damages, it is not binding on the UK patent registry (no cancellation or modification by the UPC itself).
  • Enforcement practice: The practical handling of enforcement and enforcement in the UK remains a challenge, especially if active assistance from British authorities is required.
  • Limitations: No jurisdiction for the UPC to make a “declaratory finding of invalidity” of the UK patent; such applications for a declaratory judgment may be rejected due to lack of legal interest in bringing proceedings.
  • Open: The question remains as to the exact criteria under which the UPC will also allow the extension of long-arm jurisdiction to defendants who are not domiciled in a UPC member state. This is being discussed with regard to the relevant jurisdiction rules of the Brussels Ia Regulation, in particular in the case of a so-called “anchor defendant,” i.e., proceedings against several defendants where only one (or more) of the defendants is domiciled in a UPC member state, but others are not. Usually, this requires close economic ties, a uniform set of facts, and an overriding interest in consolidating proceedings. However, a final decision by the UPC is still pending.

Conclusion

The case law of the UPC and the interpretation of the ECJ create a new dynamic for cross-border patent litigation in Europe and beyond. The judgments in the Fujifilm v. Kodak cases clearly demonstrate that the UPC now actually has “long arm jurisdiction” that is effective in practice as long as the defendant is based in a UPC member state. For patent owners, this represents a strategic gain. For defendants, the procedural risk increases significantly – there are also potential far-reaching consequences in countries outside the UPCA, particularly in the United Kingdom.

When does the UPC switch languages?

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Lessons from five language‑change orders (2024‑2025)

Since the Unified Patent Court (UPC) opened its doors in June 2023, parties have quickly tested Article 49 (5) UPCA and Rule 323 RoP, asking the Court to switch from a local language to the language of the patent — almost always English. Five select orders from the Court of First Instance from the past year illustrate what will, and what will not, tip the scale.

This sample is small but diverse: two applications by Big Tech defendants (Ona Patents SL v. Apple, UPC_CFI_99/2024, and Ona Patents SL v. Google, UPC_CFI_100/2024) were refused and the appeal thrown out, due to closure of the written procedure; two requests in multinational supply‑chain disputes (Maxeon v. Aiko, UPC_CFI_336/2024, and InterDigital v. Disney, UPC_CFI_292/2025) were granted; and one medical‑device fight (MED‑EL v. Advanced Bionics, UPC_CFI_410/2023) ended in a refusal. All five were decided by President of the Court of First Instance, Florence Butin, as set forth by Art. 49 (5) UPCA, ensuring doctrinal consistency while revealing how finely the balancing exercise is calibrated.

1. Factors that consistently move the Court

• Language of the patent and prior art
The Court starts from the text of Article 49 (5) UPCA: using the grant language promotes technical accuracy. In every granted order the patent itself and most exhibits were already in English, so switching avoided duplication and mistranslation.

• Working language of both sides
Where claimant and defendant already negotiate, draft and contract in English, the Court sees little fairness in forcing one party to defend itself in German. This was evident in InterDigital v. Disney and Maxeon v. Aiko, where all corporate decision‑makers operated in English.

• Cross‑border coordination needs
Multi‑defendant cases spanning several EU states persuade the Court that a single “neutral” procedural language reduces cost and delay. The Mannheim order in InterDigital v. Disney underlined the logistical burden for the defendant (Disney) of translating pleadings for ten U.S. and Dutch entities.

• Dead‑heat → defendant wins
Echoing the Court of Appeal in 10x Genomics v. Curio (UPC_CoA_101/2024, ApL_12116/2024), President Butin treats the defendant’s preference as decisive when the overall balance of interests is otherwise even, referring to Art. 49 (5) UPCA, which states that the President of the Court of First Instance decides “on grounds of fairness and taking into account all relevant circumstances, including the position of parties, in particular the position of the defendant”. This tie‑breaker tipped the scale in Maxeon v. Aiko, even warranting a headnote (No. 2) to this order.

2. Arguments that rarely persuade

• “We are a global giant, so English is easier.”
Apple and Google invoked the lingua franca of their headquarters, but the Court refused to magnify an already dominant party’s convenience at the expense of a start‑up claimant that had prepared its German case months in advance.

• Parallel proceedings chosen by the applicant
Advanced Bionics relied on a pending English‑language revocation action it had itself filed in Paris. The Court called that a strategic choice and refused to let it dictate the language of infringement proceedings in Mannheim, as keeping German is “not obviously affecting the conditions under which the defence is exercised in the present action”.

• Presence of English‑speaking lawyers
The Court repeatedly stressed that counsel’s language skills cannot cure the disadvantage faced by the client’s internal teams or senior management (for instance in the 2nd headnote to Maxeon v. Aiko).

• Generic cost‑savings claims
Parties must show concrete prejudice, not just “translation costs.” Without evidence of real delay or risk, the Court treats such costs as the ordinary price of litigation.

3. Issues weighed differently across the five orders

• Relative size and resources
When the claimant was a scale‑up (Ona Patents) and the defendant a blue‑chip behemoth (Google and Apple respectively), the Court emphasised the power imbalance and kept German as the forum language. In Maxeon v. Aiko, by contrast, two multinationals of comparable heft neutralised this factor.

• Location of defendants
The presence of several German entities did not block a switch in Maxeon v. Aiko — because key technical staff sat in China and communication ran in English. Yet in MED‑EL v. Advanced Bionics, two German‑speaking defendants were enough to keep German as the language of proceedings.

• Timing and formality
All five orders confirm that an application filed even before the Statement of Defence, or through the CMS ‘generic application’ channel, is procedurally admissible. Nevertheless, Apple and Google were criticised for waiting until ten weeks after service, feeding the perception of tactical delay.

• Management‑level comprehension
The Düsseldorf order in Maxeon v. Aiko (2nd headnote) gave weight to the fact that none of the Aiko group’s senior legal managers spoke German, whereas Maxeon’s chief legal officer was an English speaker (echoing the CofA in 10x Genomics v. Curio once again). The Mannheim order in MED‑EL v. Advanced Bionics found no comparable mismatch and so discounted the point.

4. Practical checklist for future applicants

✔ File early — ideally with or shortly after your appearance — and explain why refraining from a language change will hamper your defence under the tight UPC calendar.

✔ Prove that decision‑makers on both sides already operate in English or another suitable language.

✔ Show that exhibits, prior art and parallel EPO or national files are predominantly in English or another suitable language.

✖ Don’t rely on your own size, your counsel’s fluency, or proceedings you chose to start elsewhere.

5. Take‑away

While dominant, English has no automatic primacy at the UPC. A request under Rule 323 succeeds only when it serves fairness, measured case‑by‑case: does the existing language place a meaningful burden on the applicant, and will the switch harm the other side? If the balance is even, the defendant gets the benefit. Until that calculus changes, litigants should prepare their narratives — and their evidence — accordingly.

New decision G 1/23 of the Enlarged Board of Appeal of the EPO

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Publicly available product is prior art, even when not reproducible

In decision G 1 /23 issued on July 2, 2025, the Enlarged Board of Appeal of the European Patent Office was confronted with the question of whether a product put on the market is considered prior art regardless of enablement. In particular, the referral asks whether the non-enabling prior use of a product excludes the composition of the product, and also the product as such, from the prior art.

Key takeaways of the decision

  • Availability is sufficient: A product that was made publicly available before the filing date (e.g. through sales) is considered part of the prior art, even if it could not be technically analyzed or reproduced at that time.
  • No reproducibility requirement: Article 54(2) EPC does not require that a skilled person must have been able to reproduce the product before the filing date. Major impact on inventions in the fields of chemistry and materials science, where the internal composition is often hard to detect.
  • Possible impact also on computer-implemented inventions, where it is rather difficult to verify the exact code and algorithms or for prototypes delivered to clients under agreements forbidding reverse-engineering or internal manipulation.

Particulars of the case

The case originated from an opposition by Borealis GmbH (Opponent) against the European Patent No. 2 626 911, held by Mitsui Chemicals, Inc. and Mitsui Chemicals ICT Materia, Inc. (Patent Proprietors), concerning a solar cell sealing material.

At the center of the dispute was the commercially available product “ENGAGE® 8400,” a complex polymer used for sealing in solar modules. Although this product had been made commercially available before the priority date of the opposed patent, it was not possible to fully analyze its chemical composition and thus to reproduce it by the relevant date.

Against this background, it was controversially discussed whether such a (disclosed but allegedly non-reproducible) product could be considered prior art when assessing inventive step.

In previous decision G1/92, it had been ruled that “The chemical composition of a product is state of the art when the product as such is available to the public and can be analysed “and reproduced” by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition”. There, the Enlarged Board of Appeal held that where it is possible for the skilled person to discover the composition or the internal structure of the product “and to reproduce it” without undue burden, then both the product and its composition or internal structure become state of the art”. This lead to the possibility of excluding from the prior art non-reproducible disclosures, including non-reproducible public prior uses.

The case was referred to the Enlarged Board of Appeal to seek clarification as to whether the non-enabling prior use of a product excludes the composition of the product from the prior art or whether it also excludes the product per se.

This is of significance, because if the product per se is excluded it cannot be used as a starting point for an inventive step analysis. The referral also seeks clarification over the definition of enablement with respect to the prior use of a product, and particularly whether “enablement” requires that the skilled person be able to fully analyse and reproduce the exact same product.

The decision and its aftermath

In new decision G 1/23, the Enlarged Board of Appeal sets the criterion that the chemical composition of a product is part of the state of the art when the product as such is available to the public and can be analysed by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition.

Accordingly, while decision G1/92 is not being overturned, it is being partly amended in that the “reproducibility requirement” is no longer used when assessing whether a public prior use is deemed publicly available and hence belongs to the prior art.

In reaching this decision, the Enlarged Board of Appeal emphasized that the prior art refers to abstract technical teachings or information, which, once made public, do not disappear even if the physical carrier (e.g., the product itself) is no longer available. Problems in proving what was disclosed by a product (e.g., if it is no longer available) are issues of evidence, not reasons to deny its prior art status.

While a non-reproducible product now belongs to the state of the art and could potentially destroy novelty, it does not necessarily follow that it will be equally relevant to assessments of inventive step. As the Enlarged Board of Appeal explicitly found, the skilled person may still disregard such a product as relevant prior art for good reason. This is because the assessment of inventive step depends on the context and is influenced by numerous factors, including the general knowledge of the skilled person, the analyzable properties of the product and practical limitations.

This triggers the question of whether analysis of a chemical product, as considered in G 1/23. may be handled on the same footing as analysis of a (compiled) software product available on the market in terms of determining whether its internal functioning (e.g. underlying algorithm) “can be analysed”. It should be borne in mind that decompiling a software product is allowed in the EU only under special circumstances, since reproduction and translation of any code form (i.e. de-compilation) is generally seen as an exclusive right of the copyright owner (see CJEU October 6, 2021, ECLI:EU:C:2021:811 (Top Systems/Belgian State) on Directive 2009/24/EC). This may influence the assessment of what the skilled person might be expected to do. Notably, cooperation and license-agreements may also explicitly ban decompiling and reverse-engineering. By contrast, in chemistry, analysis of a chemical product typically is considered as belonging to the standard abilities of the skilled person and is not legally restricted.

Impact on Practice

  • For examination proceedings: Novelty can now also be destroyed by products whose exact composition cannot be reconstructed or reverse-engineered – the sole decisive factor is their public availability.
  • For patent applicants: Exercise caution when marketing innovative products before the filing date of a first patent application, even when they are difficult to analyze, as they may also be considered novelty-destroying. Early filing of the patent application has thereby become even more important, as there will be even less chances to still a product once put on the market.
  • For search and opposition: Pay increased attention to actual products on the market, regardless of their complete technical disclosure.
  • For licensing agreements, cooperations and delivery of customer prototypes, especially for mechanical and software products: Try including in the agreement a clause explicitly forbidding de-compilation and reverse-engineering.

UPC case law on security for costs is shaping up

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The Rules of Procedure give no guidance on security of costs. Who must provide security and in which scenarios? How much security must be provided, and by which means?

Luckily, recent case law has greatly diminished legal uncertainty and provides the following answers:

The defendant in an infringement action can under no circumstances be obliged to provide security (UPC_CoA_393/2025, order of 20 June 2025[1])

The defendant in a counterclaim for revocation (typically the claimant in the infringement action) however can be obliged to provide security (ibid).

An application for security has to sufficiently demonstrate that (a) the financial position of the opposing party gives concern that a possible order on recoverable costs from said party may not be enforceable and/or (b) such an order may not be enforceable or enforcement might be unduly burdensome at the seat of the relevant party, based on the relevant domestic law and its application in practice (last confirmed in UPC_CoA_431/2025, order of 9 July 2024[2]). A projection on the likely outcome of the case however cannot be factored into the decision on security (UPC_CoA_548/2024, order of 29 November 2024[3]).

For case (a), the following rules have been established so far:

  • Only the financial situation of a party itself is relevant, not of the corporate group it belongs to (UPC_CoA_548/2024, order of 29 November 2024)
  • If publicly available information leaves doubts on the financial capability of a party, it must sufficiently demonstrate its financial capabilities based on its internally available information (LD Munich, UPC_CFI_149/2024, decision of 3 July 2025)
  • IP rights per se do not demonstrate financial capability (ibid)
  • NPEs are not a priori insufficiently capable (ibid)
  • Future risks for a party, like potential cost risks from parallel patent infringement proceedings it initiated, must be factored into the assessment of its financial situation (ibid)

For case (b), the following rules have been established so far:

  • Claimants from the EU and EEA do not qualify, i.e. no difficulties regarding enforcement (UPC_CoA_431/2025, order of 9 July 2024)
  • Claimants from the US will most likely not qualify (various CFI decisions, see LD Munich, UPC_CFI_149/2024, decision of 3 July 2025, item 22 with further references[1]
  • Claimants from China will most likely qualify (UPC_CoA_431/2025, order of 9 July 2024)

The amount of security will typically be the recoverable ceiling of attorney fees, which in turn is based on the dispute value (UPC_CoA_431/2025, order of 9 July 2024)

Security can be provided via bank guarantee, but guarantees from non-EU banks might not be accepted by the courts (UPC_CoA_301/2024, order of 16 September 2024[1])

 

Source reference

[1] https://www.unified-patent-court.org/sites/default/files/files/api_order/7227B579856831BF403C2E1A21270A9E_en.pdf

[2] https://www.unified-patent-court.org/sites/default/files/files/api_order/11C608D05CDE6D77F1DDE007FD8B3B43_en.pdf

[3] https://www.unified-patent-court.org/sites/default/files/files/api_order/EDDAE38EC4057A8059B5063F75CCD1C3_en.pdf

[4] https://www.unified-patent-court.org/sites/default/files/files/api_order/1408F1C41F8066722AFE89AB5ED5DCD3_de.pdf

[5] https://www.unified-patent-court.org/sites/default/files/files/api_order/67AF17792505738C77F7EC41BDF720A6_en.pdf

 

Patent and trade mark seminar in Bielefeld on October 07, 2025

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Free IP seminar on patent and trade mark law in Bielefeld. Look forward to exciting presentations by experienced attorneys at law and patent attorneys from BOEHMERT & BOEHMERT and a relaxed exchange of ideas. Register now!

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The Patent Lawyer lists BOEHMERT & BOEHMERT among the ten best law firms in Germany in 2025

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The law firm is thus among the top 10 in the field of patent law.

The trade magazine “The Patent Lawyer” has published its annual ranking of the most recognized patent law firms in Europe and the United Kingdom. Once again, BOEHMERT & BOEHMERT is delighted to be listed among the 10 best law firms for patent law in Germany.

The jury’s verdict is: “Boehmert & Boehmert has been recognized for its reinforced leadership in German IP law. The firm played a key role in securing European patents for LG Chem and LG Energy Solution concerning safety-reinforced separators used in lithium-ion batteries. With six German offices and international hubs in Alicante, Paris, and Shanghai, the firm continues to support a diverse and multinational clientele. Its 60+ specialized team focuses on patent prosecution, EPO oppositions, UPC representation, and complex portfolio management. ”

According to The Patent Lawyer, the ranking is based on a multi-layered methodology resulting from months of industry research and feedback from readers, clients, and valued contacts around the world.

The results were published in the May/June 2025 issue of the magazine and can be viewed online here.