UPC Court Of Appeal Puts Practical Limits On The 'Long-arm' Jurisdiction

The UPC Court of Appeal (CoA) has provided guidance on how the UPC should exercise its international (or "long-arm") jurisdiction in relation to the validity and infringement of European Patents (EPs) from non-UPC countries. The CoA was clear that international law principles of comity must be taken into account when deciding how those issues should be determined and outlined the appropriate approach in a range of scenarios with that in mind. The CoA also confirmed that where it does proceed to decide issues of infringement or validity of an EP from non-UPC countries, it must do so by applying the national patent law of that country. (Fujifilm Corporation v Kodak GmbH and others UPC_CoA_312/2025; UPC_CoA_333/2025; UPC_CoA_880/2025; UPC_CoA_882/2025, 2 June 2026).

The CoA first considered the scope of the UPC's international jurisdiction, confirming that: 

• The UPC has jurisdiction over EPs as a whole, regardless of whether the designation in question is within or outside the UPC territory. 
• Where the defendants are domiciled in the UPC territory then, by reference to the discussion in BSH, the UPC cannot decline jurisdiction on the basis that another non-Member State is a more appropriate forum. 
• So, in this case, the UPC could not decline jurisdiction regarding infringement of the UK part of the patent, because the Kodak defendants were all domiciled within the UPC territory. 
• It did not matter that the allegedly infringing acts took place outside the UPC territory – the domicile of the defendants was the determining factor in whether or not the UPC had jurisdiction. 

The CoA, however, went on to say that the issue of whether the UPC has jurisdiction over an issue is separate to the question of how that jurisdiction should be exercised. They then considered this second question in considerable detail, coming to the following conclusions:

• In deciding how to exercise its international jurisdiction, the UPC must have regard to international law principles of comity. 
• The UPC must decline standalone revocation actions filed in respect of non-UPC state EPs.
• Where the UPC has come to the conclusion that the EP in force in the UPC territory is invalid (but would have been infringed if it were valid) the patentee should initially be given an opportunity to withdraw the action in respect of the non-UPC EPs but, if it does not do so, then:
  • for EPs of EU/Lugano countries outside the UPC territory (e.g. Spain or Switzerland):
    • the defendant should be given an opportunity to file a revocation action in the relevant national court (if it has not done so already) and the infringement action will be stayed pending the final outcome of that revocation action;
    • if the defendant does not lodge a national revocation action, the UPC should go on to decide infringement on the assumption that the patent is valid.
  • for EPs of non-EU/Lugano non-UPC countries (such as the UK, for example), the UPC should dismiss the infringement action unless there is a specific reason not to do so (for example, different claims are involved which the UPC considers are valid).
• Where the UPC has concluded that the EP in force in the UPC territory is valid and infringed, the UPC may, where appropriate and to avoid delay, assume that the non-UPC parts of the patent are also valid and issue an infringement decision (including imposing injunctions), provided that it does so on a conditional basis. That means that the UPC's order on infringement will become final, or fall away, automatically depending on whether the national court subsequently finds the patent valid or invalid, respectively. 

The CoA's decision places significant practical and procedural limitations on the UPC's approach to cross-border patent infringement, notwithstanding the broad scope of jurisdiction conferred upon the court in legislation and as discussed in the CJEU decision in BSH. It will be interesting to see whether EU national patent courts take a similarity conciliatory approach when applying the BSH decision in future, or if they view this as an opportunity to maintain a point of difference to the UPC going forwards.