The UPC’s Long-Arm Jurisdiction: How Far Does the Unified Patent Court Reach?
When European patent holders discuss the future of patent enforcement today, one topic can no
longer be avoided: the Unified Patent Court. Since June 1, 2023, the unified patent court has had
jurisdiction for up to 17 EU member states. This sounds like a clear, manageable structure. But
reality looks different. In the Fujifilm versus Kodak case, the UPC just made a decision that pushes
the boundaries of its own jurisdiction far beyond what the member states originally had in mind.
The Background
To properly assess the implications of this decision, a brief look back is necessary. A European
patent that participates in the unitary patent system becomes a “unitary patent” – and thus falls
under the jurisdiction of the UPC. In the remaining member states, national patent law continues to
apply. The principle is clear: unitary patents go to the UPC, national patents remain with national
courts. Up to this point, there was little dispute.
Then came Fujifilm’s lawsuit against Kodak – and a scenario that was not anticipated in the UPC
Agreement. Kodak is domiciled in a non-UPC state, Fujifilm is also located outside the usual core
UPC states. The question that arose: Is the UPC even competent when both parties are domiciled
in countries that do not participate in the Unified Patent Court system?
The UPC’s answer: Yes. And this answer is the decisive turning point.
Understanding the Long-Arm Principle
What does “long-arm jurisdiction” actually mean in patent law? The term originates from US law,
where courts can issue judgments even outside their actual territorial boundaries – as long as there
is sufficient “contact” with the jurisdiction. In the UPC context, the First Instance Division has
applied the principle analogously: If a patent enjoys protection in the territory of a UPC member
state – and a unitary patent does exactly that – then the right holder can also sue companies that
themselves are not domiciled in a UPC state.
Why? Because the act of infringement – the sale, marketing, or use of the patent protection – takes
place on UPC territory. And this is precisely what the court has deemed sufficient to establish its
jurisdiction.
In short: You do not need to be domiciled in Germany, France, or Italy to file a lawsuit at the UPC –
as long as someone infringes your patent on UPC territory.
Market Implications
The decision has far-reaching consequences. For international corporations, this means: If you own
a European patent and participate in a unitary patent, you can now sue practically anyone on the
European market – regardless of the defendant’s domicile. This affects Asian manufacturers, North
American software companies, British biotech firms – in short: all companies that market products
in Europe.
Conversely, it also means: If you operate in Europe but do not have a domicile in a UPC state, you
can no longer assume that you are “safe” from UPC proceedings. The threshold for being excluded
from UPC proceedings has risen. This has immediate effects on the market entry strategies of
non-EU companies.
For European right holders, a new strategic field has opened up. Previously, if you wanted to take
action against a foreign competitor, you often had to call upon local courts at several locations –
costly, time-intensive, and with the risk of conflicting judgments. Now, the plaintiff can assert a
unitary patent before the UPC and receive a decision that applies in all UPC member states. One
process, one judgment, multiple states. This is a massive procedural advantage.
Legal Assessment
Legally, the decision is by no means uncontested. The UPC Agreement says nothing explicit about
“long-arm” jurisdiction. The division justified the principle through interpretation of Articles 32 and 33
of the UPC Agreement – which is an expansive reading that many patent attorneys and jurists view
skeptically.
The core of the debate: Is the domicile of the defendant relevant, or is the act of infringement on
UPC territory sufficient? The First Instance Division says: The latter is sufficient. Critics argue that
the Agreement would have required a narrower interpretation here – after all, the UPC was also
about creating a predictable, limited jurisdictional structure, not about an unlimited Europe-wide
right to sue.
The division has also referred to the principle of effectiveness: If a patent enjoys protection in the
territory of a member state, the plaintiff must also be able to take effective action against it. A
prohibition on lawsuits against non-UPC headquarters conglomerates would undermine this
protection. This is a plausible argument – but it also shows how far the division is thinking about
patent law here, beyond what the treaty signatories may have had in mind.
The Reference to the Court of Justice
Particularly noteworthy is the aspect that the division has submitted a question for a preliminary
ruling to the Court of Justice of the European Union. This is rather unusual in patent disputes and
shows: The division itself is not sure whether its interpretation holds up. The Court of Justice will
now have to decide whether the “long-arm” jurisdiction is lawful under the UPC system – or whether
it constitutes an overreach by the First Instance Division.
Until the Court of Justice’s decision – which could take years – the UPC’s practice continues to
apply. This means: If you sue at the UPC now, you can rely on this expansive interpretation. If you
could be a defendant, you should adjust to the new reality.
Strategic Implications for Plaintiffs
The “long-arm” decision fundamentally changes litigation strategy. Here are some points that patent
right holders should consider now:
- Portfolio Check: Which patents have unitary character? Only these are relevant for UPC lawsuits.
- Defendant Analysis: Who markets products in Europe that could potentially infringe – even if the
domicile is abroad? The Fujifilm/Kodak decision says: Nothing prevents you from suing them. - Cost-Benefit Analysis: UPC lawsuits can be expensive. A unitary judgment is an advantage, but
the procedural costs at the UPC are often higher than on the national level. - Parallel Proceedings: The decision also opens up new opportunities for strategically clever
parallel proceedings. If you can sue in both a UPC state and a non-UPC state, you have additional
leverage.
Strategic Implications for Defendants
For companies that engage in Europe – but do not have a domicile in a UPC state – the situation
changes dramatically. The following points are critical:
- Clearance Analysis: If you market products in Europe, check whether you could potentially
infringe a unitary patent. UPC jurisdiction extends to the entire territory of UPC states – not just the
ones where you are officially domiciled. - Licensing Strategy: If you market a product that could potentially be covered by a unitary patent,
you should pursue licensing negotiations early – before the right holder sues. - Design-Around: The UPC decision shows that the court is not stopped by territorial boundaries. If
you develop a product, you should check from the outset whether it potentially carries infringement
risk – and if so, whether an alternative construction is possible. - Insurance: Many companies have patent infringement insurance. Check whether this also covers
UPC lawsuits – particularly against defendants in non-UPC states.
The Future
The “long-arm” decision is not an isolated case – there will be more. The Court of Justice will
decide, but even then, the UPC will continue to grow. New states will join, jurisprudence will evolve,
and with it, the question of how far the jurisdiction actually reaches.
For companies, this means: Patent law in Europe is becoming more complex, not simpler. Those
who understand this and act strategically will have the advantage. Those who think that patent law
is only a national matter – that will change soon.
Conclusion
The Fujifilm/Kodak decision is more than an isolated case. It marks the beginning of a new era in
European patent law. The UPC has just proven that it goes beyond its own contractual boundaries
– and thus fundamentally changes the rules of the game. Patent right holders and companies
should position themselves now. The time for strategic decisions is now – not only when the lawsuit
has already been served.
If you own European patents, you should check whether you use the “long-arm” jurisdiction – or
better, whether you prepare for it. Because one thing is certain: This trend will not be stopped. The
question is only whether you will maintain control, or whether it will be brought to you
