UPC CFI, LD Mannheim, 18 July 2025: Cross border jurisdiction of the UPC regarding UK infringements by German defendants
12-08-2025 Print this page
Direct and indirect infringement in the UK by German defendants (Article 25 UPCA, Article 26 UPCA).
Infringement action exclusively governed by procedural law of the forum, in accordance with fundamental principles of international procedural law.
Cross border jurisdiction UPC (Article 4 Brussels I Regulation, Article 24(4) Brussels I Regulation). UPC as court of the domicile of defendant does have jurisdiction to rule on an infringement action based on a patent granted or validated in a NON-EU member state even if the invalidity of this patent is raised as a defence. Inter partes effect only of validity findings: there is no jurisdiction for a defence which seeks to affect the existence or content of that patent in that third state, or to cause its national register to be amended (cf. ECJ, judgement of 25 February 2025, C-399/22, para. 74 et seq.).
Infringement in the UK: insufficient facts that there at least is an imminent danger that the Defendants will infringe upon the UK bundle patent by relocating the production site from Germany to the UK. Uncontested commercialization of Sonora-XTRA 3 plates in the UK. The acts of offering, placing on the market, using or storing it for those purposes had not been contested by Defendants with a sufficient level of substantiation (see infra).
No UK prior use rights (Article 28 UPCA), at least Defendants did not submit sufficient facts so as to establish that they had also made the final business decision within the Kodak Group to commercialize printing plates with the features of the claimed invention before the relevant priority date.
No time period in advance for communicating information (Article 67 UPCA) On the instant facts, considering the complexity, the panel regards it as not feasible to set an appropriate time period in advance in the individual case at hand. Whether the Defendants will have provided the required information in due time, depends on the circumstances and will be assessed in the enforcement proceedings, if necessary.
Recall and definitive removal from the channels of commerce are two separate measures (Article 64(2)(b) and (d) UPCA).
