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

/in ,

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.