UPC CoA, 2 June 2026: On international jurisdiction, prior use and infringing acts: import, manufacture an tortfeasorship
05-06-2026 Print this page
Infringement orders for UK and Germany set aside.
No infringement in Germany because private prior use right of Kodak Graphic (Article 28 UPCA).
Alleged infringement by Kodak Graphic in UK unsubstantiated (Article 25 UPCA). Fujifilm accepts that under UK law the importer is the party who has legal and beneficial interest in the goods. Under German case law ‘manufacture’ […] does not mean processing or transforming the material oneself: a person who has a material processed into a new item under a contract for work may be regarded as the manufacturer
Claim construction (Article 69 EPC). There is no general rule that the skilled person would always and automatically take into account fluctuations which are due to the manufacturing process and the measurement method and in doing so would automatically add deviations to the – as such precise – numerical value in a claim feature. This may be a result of claim interpretation but is not inherent to the use of a numerical value in a claim.
Front Loaded Proceedings (Rule 29(c) RoP, R. 263 RoP). It is not contrary to the lodging of a Rejoinder to the Reply to the Statement of defence. or the front loaded system of the RoP if a party submits additional evidence of an already stated fact or submitted argument for which other evidence had already been submitted, but which was disputed by the other party.
International Jurisdiction UPC. UPC’s jurisdiction is not confined to its own territory (Article 34 UPCA). UPCA is expressly not limited to European patents insofar as validated for the UPC territory only. As such, European patents validated in territories outside the UPC territory is ‘matter governed by the UPCA’.
Art. 24(3) UPCA specifically leaves open the possibility that there is a need for the UPCA to apply national law, including that of non-contracting States (Article 24(3) UPCA) The use of ‘in particular’ makes clear that the areas of application of such foreign law is not limited to the matters referred to in the articles mentioned.
No forum non-convenience (Article 4 Br I bis) Where a court has jurisdiction under Article 4 Br I bis because the defendant is domiciled in its territory, […], the Regulation precludes that court from declining jurisdiction on the ground that a court of a non-Member State would be a more appropriate forum for the trial of the action, even if the jurisdiction of no other Member State is in issue, or the proceedings have no connecting factors to any other Member State.
Accepting jurisdiction in infringement action vis-à-vis a defendant domiciled in the UPC’s territory based on Art. 4 Br I bis as such cannot be considered contrary to the TRIPS Agreement. Accepting jurisdiction […] must be distinguished from how this jurisdiction is subsequently exercised by the Court in view of all the circumstances of the case.
Exercising International Jurisdiction.
A court having jurisdiction to hear an alleged infringement of a patent validated outside its territory, is required to apply the law applicable to that patent and must also apply international law principles such as comity.
Where the Court has jurisdiction to decide on the alleged infringement and remedies, based on a non-UPC designation of a European patent (EP), and where the defendant has as a defence – asserted that the EP relied on is invalid (Article 24(4) Brussels I Bis, Article 22(4) Lugano Convention) then: [...] The Court of Appeal considers the following approach regarding actions based on EU/LC European patents and/or non-EU/LC European patents to be in line with BSH v Electrolux and international principles of law, including comity, for the following situations (I, II and III respectively):) I – when a revocation action lodged with the Court with respect to (a) EU/LC EP(s) and/or non-EU/LC EP(s): the Court shall declare that it lacks jurisdiction to decide the action. II- in an infringement action which is also based on (a) EU/LC EP(s) and/or non-EU/LC EP(s), and the patent in force in the UPC territory is considered invalid, but the attacked embodiment or process would infringe if it were valid [...] III - in an infringement action which is also based on (a) EU/LC EP(s) and/or non-EU/LC EP(s), and the patent in force in the UPC territory is considered valid and infringed in the UPC territory[...].
Jurisdiction of the UPCA under Art. 32.1(a) UPCA to hear actions for infringement extends to allegations of joint tortfeasorship (Article 32.1(a) UPCA, Article 63 UPCA ,Article 25 UPCA). An "infringer" within the meaning of Art. 63 UPCA in conjunction with Art. 25 UPCA is also a person who does not personally carry out the acts referred to in Art. 25 UPCA but to whom the acts of a third party are attributable because he is an accessory.
