UPC Judgments

One of the most important benefits of the UPC is the range of jurisdictions for which remedies, including injunctions, are available.

Decisions and orders of the UPC are directly enforceable within UPC territory and, it seems, the EU more broadly. However, for countries like the UK that may be covered by a European Patent, but are not EU Member States, there is a question over whether UPC decisions and orders can be enforced. These issues have arisen, at least in part, in the ongoing dispute between Fujifilm and Kodak over printing plates. This dispute, which has played out at the Mannheim Local Division of the UPC, illustrates the lengths, and limits, of the UPC’s “long-arm” jurisdiction.

In this article, we set out the context in which these questions arose in the Fujifilm v Kodak litigation and then address whether UPC judgments, such as Fujifilm v Kodak, can be enforced in (i) the UPC Contracting States, (ii) the EU Member States and (iii) in a non-EU jurisdiction: the UK.

Fujifilm v Kodak
‍Fujifilm brought proceedings for infringement of multiple patents in both Germany and the UK against Kodak. The UPC initially confirmed that it had jurisdiction over the UK part of a European patent provided the defendant is EU-domiciled in January 2025, however they went no further at this stage given the underlying patent was found to be invalid.

For the next two European patents, the Mannheim Local Division of the UPC opted to decide the UK and German parts separately. They heard the German part first, finding in April 2025 that one patent was invalid and the other was valid and infringed. It also issued a German injunction and awarded damages. They also ordered Kodak to provide information on the sale of infringing goods to external markets (including the UK).

Before deciding the UK part, the court awaited the CJEU decision in BSH v Electrolux¹. In this landmark decision, the CJEU confirmed that a court of one (or in the case of the UPC, many) Member State(s) has jurisdiction to hear an infringement action based on a patent in force in a third country even where the validity of the patent is contested. Thus, in July 2025 the court again found that the UPC had jurisdiction over both patents with respect to the UK. Similarly to the German patents, the court found one UK patent invalid and the other valid and infringed.

For the invalid UK patent, the court stated that their decision on invalidity was one made between the parties, not a decision which would amount to revocation of the patent in the UK. On the basis of the finding of invalidity no injunction was granted (as you can’t infringe an invalid patent).

For the valid and infring UK patent, they found this to be valid on the basis of an amendment to the patent. While this would normally require the UKIPO to be informed and the patent formally amended, the UPC held that this action also only had inter partes effect, as the UPC does not have jurisdiction over the UKIPO².

It is also notable that the court also applied the UPC test for inventive step, rather than the UK test, stating that this was because the parties had not presented arguments specific to the UK test for inventive step. As a remedy for infringement of the deemed-valid UK patent, the court ordered a permanent injunction against Kodak selling infringing products directly to UK distributors.

The proceedings did not stop there. In January 2026, the parties returned to court as an issue with compliance with the court’s final order had arisen. The court then issued an order penalising Kodak for the failure to provide the ordered information regarding sales of goods to UK distributors. However, they did not penalise Kodak for the alleged failure to stop importing infringing goods into the UK, deeming this to be premature as Fujifilm had not taken steps for the judgment to be recognised in the UK, and therefore the UK courts had not considered whether the injunction could be enforced. Even though the defendant was domiciled within UPC territory, and the UPC could in principle impose financial penalties for non-compliance, the court decided for reasons of comity that it should not do so. The distinction the UPC drew was whether action was required in the foreign territory (i.e. the UK) or not – the information requested did not require action in the UK, but the cessation of importation of infringing goods would.

Enforcement in UPC contracting states
‍The UPC’s decision and orders against Kodak for infringement of Fujifilm’s German patents are directly enforceable in UPC Contracting States³. This would be the same for any UPC decision concerning a UPC Contracting State according to the following Articles of the UPC Agreement⁴:

Article 34 – Territorial scope of decisions
Decisions of the Court shall cover, in the case of a European patent, the territory of those Contracting Member States for which the European patent has effect.

Articles 82(1) and 82(3)

1. Decisions and orders of the Court shall be enforceable in any Contracting Member State. An order for the enforcement of a decision shall be appended to the decision by the Court.

3. Without prejudice to this Agreement and the Statute, enforcement procedures shall be governed by the law of the Contracting Member State where the enforcement takes place. Any decision of the Court shall be enforced under the same conditions as a decision given in the Contracting Member State where the enforcement takes place.

The result of these rules is that a UPC judgment is automatically recognised and enforceable as if it were a national judgment of one of the UPC Contracting States. Therefore, it appears that a UPC judgment awarding an injunction in Germany is equivalent to a German national decision with the same finding and can be enforced in line with German national procedure.

If a UPC decision is not complied with, the UPC can order penalty payment sanctions for non-compliance, as addressed in Fujifilm v Kodak. Additionally, if a UPC decision is not complied with, enforcement procedures can be brought at the national courts of the Contracting States seeking the relevant relief available in that Contracting State.

Enforcement in EU member states
‍In particular, Articles 71a and 71d of this regulation confirm that the UPC is deemed to be a court of a “Member State” for the purposes of the regulation. And Article 36 and following of the regulation provide, with certain caveats in later Articles, that judgments given in any EU Member State shall be recognised and enforced in the other Member States.

This means that UPC decisions should be able to be recognised and enforced in EU Member States, including those which are not UPC contracting parties, such as Spain or Poland.

Can a UPC decision be enforced in the UK?

Enforceability of UPC decisions in the UK
‍The UK is not a Contracting State of the UPC, the applicable EU regulations do not apply to the UK post-Brexit, and the 2019 Hague Convention on the Recognition and Enforcement of Foreign Judgments in Civil or Commercial Matters does not apply to intellectual property. There are then two potential routes for enforcement of a UPC decision in the UK: (i) under the Foreign Judgments Act 1933⁵; or (ii) through English common law principles⁶. Enforcement of a UPC judgment under either route requires that the UPC judgment be a purely monetary judgment and not contrary to public policy. Please note that enforcement of a UPC judgment under either the Foreign Judgments Act 1933 or through the English common law route would be a complicated process dependent upon a variety of factors, including the status of appeals before the UPC, which we do not delve into in this article, however, if this area is of interest to you, EIP would be able to advise.

The requirements above means that it will only be possible to enforce a purely monetary (i.e. a decision for damages only) decision of the UPC. This means that a UPC injunction cannot be enforced in the UK. Further UK caselaw makes clear that not all monetary relief awarded by a foreign court will be recognised. The Fujifilm v Kodak decisions of the UPC suggest that if the UK court recognises the UPC judgment, the UPC may then issue its own order for payment of penalties for non-compliance with the UPC’s order in the UK, however under UK law a monetary judgment must be money due to the claimant, and not monies payable to a state or court as a punitive measure.

Further UK caselaw makes clear that not all monetary relief awarded by a foreign court will be recognised.

A potential further complication may arise if the UPC decision to award monetary relief is based on a finding of validity of a UK patent by a foreign court, as the UK may not recognise it. This is an untested area, but it is questionable whether the UPC would recognise the jurisdiction of the UPC courts to make decisions concerning the validity of UK patents as a matter of “public policy”. Applying existing case law by analogy⁸ it seems that the UK courts may recognise decisions of infringement only, but not, findings of validity/invalidity on a UK patent made by a foreign court.

Alternatives to enforcing a UPC decision in the UK
‍Given the above if a party (a) wishes to obtain an injunction from the UK courts which mirrors the injunction ordered by the UPC or (b) seeks to enforce in the UK a monetary judgment of the UPC which was based upon a decision on the validity of a UK patent, that party would have to consider bringing fresh proceedings before the UK courts to obtain the same result.

Before bringing such a claim on similar/the same issues one would need to consider (a) whether such an action is barred in the UK, whether by certain legislation⁹ and/or an abuse of process, and (b) address complicated issues of res judicata. The impact of these issues could be wide ranging, at one end of the scale, the entire claim could be barred from being heard in the UK, and at the other extreme, if the UPC decision is found to be res judicata, a claimant may be able to seek summary judgment on the basis that the issue has already been decided. This would require a detailed analysis of the details of any particular action and the application of UK legislation and case law.

Additionally, if a new UK claim can proceed and the UPC’s decision is not res judicata it would be open to the parties in the course of these UK proceedings to refer to the UPC’s decision as a persuasive authority, but the UK court would not be required to follow it.

Difficulties with the “long-arm” jurisdiction
‍All of the above represents potential impediments to the “long-arm” jurisdiction of the UPC, particularly given the UPC’s reticence to invoke penalties for the failure to comply with the UPC’s injunction in the UK prior to recognition by the UK.

But it should go without saying that it is always open to a defendant to voluntarily comply with an injunction issued by the UPC, whether to avoid further litigation and costs in the UPC/UK or for other reasons.

Conclusion
‍While the UPC’s pan-EU jurisdiction is undoubtedly wide and very powerful, there are limits to the UPC’s powers in non-EU jurisdictions, which may need to be addressed by parallel litigation in non-EU jurisdictions. With respect to the UK, no reported attempt has yet been made to enforce a UPC decision in this jurisdiction but existing UK legal procedures on the enforcement of foreign judgments in UK territory would need to be followed.

Claimants should therefore prepare for the possible need for UK proceedings should they wish to invoke the UK’s jurisdiction to award relief including UK injunctions and/or revocation of patents and will need to be live to concerns regarding a possible bar on a further UK action following the UPC’s decision and res judicata. Conversely, defendants should also consider voluntary compliance with a UPC order versus the impact of requiring the claimant to enforce in the UK.

In summary, Fujifilm v Kodak has provided valuable insight into the UPC’s developing “long-arm” jurisdiction, while also illuminating the ongoing requirement for involvement of the UK courts in the enforcement of such jurisdiction. The UPC is likely to continue to develop, but as things currently stand the two courts can therefore be considered complementary. A cross-border team with expertise in both the UPC and the UK courts, like EIP, would therefore be ideal for parties considering the best path when infringement is suspected in the UK, UPC Contracting States and other EU Member States.

Their validity should be matters for the local judges of the country in which the patent right was first created”.

<sup>¹ BSH Hausgeräte GmbH v Electrolux AB, Judgment of the Court (Grand Chamber) of 25 February 2025. Document 62022CJ0339.

² There is some disagreement between UPC Local Divisions on whether infringement of a third country patent can be found when the patent must be amended to be valid. In a recent case, the Paris Local Division explicitly stated that infringement in a third country cannot be found when the patent as granted is not valid (UPC_CFI_702/2024 (Paris LD), decision of 16 January 2026).

³ A list of the states where the UPCA is in force is available here: https://www.unifiedpatentcourt.org/en/organisation/upc-member-states

⁴ Also reflected in rule 354 of the Rules of Procedure of the UPC

⁵ Foreign Judgments (Reciprocal Enforcement) Act 1933 is an act making provision for recognising and enforcing monetary judgments of certain foreign courts subject to treaties between those countries and the UK.

⁶ As a matter of law, the common law route enforces a foreign judgment as a private debt between the parties to the judgment rather than as a judgment as such, see Adams v Cape Industries [1990] Ch 433.

⁷ The Western District of Texas has recently ruled in BMW v Onesta, albeit in the context of an anti-suit application and not proceedings for recognition of a judgment, that a lawsuit before a German national court seeking to determine infringement of US patents was contrary to US public policy.

⁸ See for example GW Pharma Ltd v Otsuka Pharmaceutical Co Ltd [2022] EWCA Civ 1462 which ruled, applying previous case law, that claims for infringement of non-UK patents were justiciable in the UK but claims for validity were not, in part as “Patents are local monopolies which involve local policies and local public interest. Their effect is territorially limited. Their validity should be matters for the local judges of the country in which the patent right was first created”.</sup>

^{⁹ A further case in the UK would likely only be barred by legislation if the UPC judgment was enforceable or entitled to recognition in the UK.}