A Court of Appeal ruling confirms the UPC can hear infringement claims tied to UK patent rights, bringing long-arm jurisdiction squarely into focus ahead of FICPI's 23rd Open Forum this September.

The UPC has taken a clear step outward. In UPC reaches beyond its borders in Fujifilm v Kodak, the Court of Appeal confirmed that it can hear infringement claims relating to the UK designation of a European patent, even though the UK is not a UPC Contracting Member State.

That is more than a procedural point. It goes to the limits of the Court's authority and, just as importantly, how far it should be prepared to exercise it. Those questions will be picked up directly at the FICPI Open Forum in September 2026, where speakers including Judge Dr. Klaus Grabinski and Professor Wang Yanfang will examine how far this long-arm jurisdiction should reach in practice.

The case arose from infringement proceedings against Germany-domiciled defendants covering both German and UK designations of the same patent. That footing required the Court to deal with three linked issues: whether Article 34 UPCA limits the Court territorially, what supports jurisdiction over a non-UPC designation, and whether international law or comity should constrain what follows from that jurisdiction.

Article 34 UPCA: effect, not reach

The defendants' starting point was straightforward: Article 34 says UPC decisions "shall cover" the territory of Contracting Member States. That, they argued, defines the outer edge of what the Court can hear.

The Court rejected that.

Article 34 is about the reach of remedies, not the existence of jurisdiction. The distinction matters. It allows the Court to determine infringement issues that extend beyond UPC territory, even if the formal effect of its orders remains confined within it.

Domicile does the work

The real anchor lies in Brussels I bis. The defendants' German domicile brought them within Article 4(1), and therefore within the jurisdiction of a Member State court, in this case, the UPC as a common court.

From there, the analysis extends beyond the EU. With sufficient connecting factors, the Court can address damage occurring outside the Union. And once jurisdiction is established on domicile, it cannot be declined on forum non conveniens grounds.

That position is now well-supported. Courts with jurisdiction on this basis may hear infringement claims tied to non-EU patents even where validity is raised in defence, so long as they do not purport to alter the existence of those rights in the state of registration.
 

Validity and applicable law: one case, two systems

The Court can address validity when raised defensively, but the limit is clear: it cannot affect the foreign register. That authority to revoke or amend the patent itself sits with the courts and patent office of the state of registration — here, the UK courts and the UK Intellectual Property Office.

More interesting, practically, is how the Court handles applicable law. Different designations bring different rules. The German designation sits within the UPC's own framework, subject to limited local carve-outs. The UK designation does not. It requires the Court to apply UK statute and case law to questions of infringement and joint tortfeasorship.

That is a question of applicable law, not comity. Once the Court takes jurisdiction, applying UK law is not optional.

Comity — the principle that a court should show deference to the sovereignty, laws, and courts of other states, exercising restraint in how far it acts even where it has the formal power to do so — sits one step earlier. It asks whether, and how far, the Court should take that jurisdiction in the first place.

The practical consequence is obvious. One set of facts, but more than one legal analysis. The evidence may be shared, but the arguments will not be identical. They will need to be shaped to the legal system being applied.
 

TRIPS, comity and strategy

The defendants also invoked TRIPS and comity. The Court kept the categories separate. Jurisdiction follows from the legal framework. Comity may shape its exercise, but it does not prevent it.

For patentees, the attraction is clear: the possibility of addressing UPC and non-UPC designations together in a single forum. For defendants, the scope for geographic fragmentation shrinks, and early forum choices become more consequential. That gain in reach is not free: hearing more than one jurisdiction's patent law in parallel adds procedural complexity and cost, particularly where the underlying legal tests genuinely differ.
 

Could, and should

The judgment answers one question cleanly. The UPC can hear claims extending beyond its own territory.

It leaves another open. Should it?

That distinction is familiar. In inventive step, the test is not whether the skilled person could reach the invention, but whether they would. Fujifilm v Kodak poses the same question of the Court. Jurisdiction based on domicile means it can hear the UK claim. Whether it should -- whether that is a sensible or restrained use of its jurisdiction -- is a separate question.

That is where comity sits. Not as a barrier, but as a constraint.

The could/should question has practical teeth, too. A claimant invoking two or more jurisdictions' patent laws on the same set of facts might very well need to frame its case slightly differently to fit each system's tests and doctrines — and those different framings could, in principle, pull in different directions, not because the facts have changed, but because the applicable law asks different questions of them. No such contradiction arose in this case, but it is easy to see how one could.

There is also a more fundamental question of institutional competence. A panel can be thoroughly briefed on a foreign jurisdiction's statutes and case law, and can apply them carefully and conscientiously. But judging is not the mechanical application of rules to facts — it involves the exercise of judgment, shaped by a feel for how a legal system's doctrines have actually developed, gained through training and experience within that system's own jurisprudence. Whether a court can develop the same instinct for a foreign body of law it does not itself administer day to day, however well acquainted it becomes with the statutes and the precedents, is a fair question, and one this decision, understandably, does not attempt to answer.

It is also where the discussion now moves. These issues will be explored at the FICPI Open Forum in September, where Judge Dr. Klaus Grabinski, Professor Wang Yanfang, and others will examine how far this long-arm jurisdiction should, in practice, extend.

 

FICPI's view

FICPI uniquely combines education and advocacy on topics around patents and trade marks, with a focus on developing the professional excellence of its individual members. FICPI Forums, Congress, committees and meetings are opportunities to gather insights from the international IP attorney community on any issue, whether it be practice-related or topics of patent and trade mark law. FICPI members help drive the IP community forwards by developing opinions and positions, attending meetings with IP organisations and Offices and working actively with FICPI members. 

 

Next steps


AI assistance was used in reviewing source materials and drafting this article. The author reviewed, edited, and takes full responsibility for the final content.

 

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