Despite the UK not being a member state of the UPC, the Fujifilm against Kodak case has confirmed that UPC still has jurisdiction to decide on infringement of European patents that are in force in the UK when a defendant is domiciled in an EU member state.
This recent case also highlights a key strategic consideration – that the UPC also has jurisdiction to grant relief to a claimant according to the remedies set out in UK statute.
Last week, the Mannheim Local Division delivered its decision on the infringement suit bought by Fujifilm against Kodak, which confirms the principles originally set out in the CJEU’s decision in BSH v Electrolux. However, the decision also makes it clear that “the UPC does not have jurisdiction to revoke the validated national part of a European Patent in relation to the United Kingdom with erga omnes effect”.
This case adds to the building evidence that the UPC is a patentee friendly forum of European litigation, with the UPC effectively enabling a pan-European patent to be enforced across the UPC member states and beyond. This ‘long arm’ of the UPC is checked in that the UPC’s power to revoke is limited only to its member states.
When it comes to other forums for opponents, EPO opposition remains an attractive alternative if within the opposition time window of 9 months from grant. The EPO is the only revocation mechanism that matches the UPC’s reach for enforcement of European patents, and indeed goes beyond to all EPO designated states for the patent opposed. Lodging an opposition is a cost-effective approach strategy compared to use of the UPC and multiple national courts. Using both the UPC and EPO is rapidly becoming the gold standard in enforcement strategy.
For any questions about UPC practice, please contact Matthew Woodhill or your usual Kilburn & Strode advisor.