UPC Grants First UK Injunction: A Remarkable Decision for UPC Patent Enforcement
The Unified Patent Court (UPC) issued its first injunction covering a UK-validated European patent, marking a critical development in the European patent enforcement landscape. This is a major decision that clarifies the UPC’s view that it has jurisdiction over the UK part of a patent granted from the European Patent Office (EPO), it can take up issues of infringement of that UK patents, and the damages arising in the UK from that infringement. The UPC cannot revoke the UK part of an EPO granted patent - but the UPC will not stay UPC proceedings to wait for a UK proceeding to determine validity of the infringed patent.
The UPC has jurisdiction over patents granted from the EPO. Such patents, once granted, can be held by the patentee as a Unitary Patent and/or a National patent, such as a German or UK patent. Germany is a member of the UPC, but the UK is not. These cases took up how far the UPC can go with patent rights granted from the EPO, but made into national patents (“validated”) in the UK, a country that is not a member of the UPC.
The UPC Mannheim Local Division's rulings in Fujifilm Corporation v. Kodak GmbH (UPC_CFI_359/2023 and UPC_CFI_365/2023) confirm that the UPC has jurisdiction to adjudicate infringement of European patents validated in the UK, even though the UK is not a member of the European Union or the UPC.
Jurisdiction over UK Patents
The decisions follow the guidance of the European Court of Justice in BSH Hausgeräte GmbH v. Electrolux AB, establishing that the UPC has jurisdiction over infringement actions involving non-EU national parts of European patents where the defendant is domiciled in an EU member state. The court emphasized that while it cannot revoke the UK part of a granted EPO patent, the UPC can assess their validity on an inter partes basis as a prerequisite to ruling on infringement.
Case Outcomes
EP 3 476 616 B1 (EP'616):
· The UPC dismissed Fujifilm's infringement action, finding the UK part of EP'616 invalid (inter partes). However, it declined Kodak's request for a formal revocation or declaration of invalidity, as such measures would exceed the court's jurisdiction.
EP 3 511 174 B1 (EP'174):
· The court found the UK part of EP'174 valid (as amended) and infringed through Kodak’s commercial activities in the UK, including direct delivery and title retention of infringing printing plates. As a result, the court granted a permanent injunction in the UK, alongside orders for damages, disclosure, corrective measures, and penalty payments.
Notably, the UPC refused to enjoin manufacturing in the UK due to lack of evidence and declined to issue a declaration of infringement for similar reasons.
Implications for Patent Strategy
These decisions offer a major clarification for rightsholders and legal practitioners navigating European patent enforcement across jurisdictions:
· For Patent Owners: The UPC now offers a route to enforce European patents validated in the UK within a single proceeding, potentially improving efficiency and consistency.
· For Alleged Infringers: UPC jurisdiction could now reach UK-related activities, increasing the scope of potential liability across Europe.
· For Practitioners: While the UPC applied UK statutory law for infringement, its approach to validity (e.g., combining prior art documents and handling amendments) diverges in key respects from UK practice. Strategic coordination with UK counsel remains crucial.
· For Innovators this is a clear signal that the European Patent system is rapidly increasing the strength, and in this case the reach, of EPO granted patents. The European Patent system is clearly competing against the US and Chinese patent right to provide commercially valuable patent rights.
