1. Key takeaways
The UPC has no jurisdiction over a European Patent with regard to those national parts of UPCA member states which have already lapsed before 1 June 2023. The same applies to national parts of non-UPCA-member states
Without prejudice to Art. 83 UPCA, Art. 3 (c) UPCA vests upon the UPC jurisdiction over any pre-existing European patent which has not yet lapsed at the date of the UPCA's entry into force, i.e., 1 June 2023. The provision has to be interpreted autonomously in accordance with the Vienna Convention on the Law of Treaties (VCLT). Thus, the court interpreted "any European patent" in Art. 3(c) UPCA as "any national part thereof" still in force.
This interpretation aligns with the UPCA's purpose of harmonizing future patent litigation and avoids retroactive effects on lapsed national parts.
Strict Requirements for Prior Use Defense
Where German Law is applicable upon a private prior use right according to Art. 28 UPCA, it is necessary that a firm and final decision to use the form of alleged prior use took place before the priority date. The defendant bears the burden of proving this decision and the possession and exercise of the invention before the priority date.
In the current case, the court rejected the defendant's prior use right defense due to insufficient evidence of a final business decision before the priority date.
Front-Loaded Procedure: Importance of presenting facts early
Defendants must present all prior use right facts and arguments in the Statement of Defense and Counterclaim for Revocation (R. 24(g), R. 25(1)(b) and (c) RoP).
Introducing new facts in later briefs undermines the fairness and efficiency of the front-loaded procedure.
Subsequent briefs are limited to responding to matters raised in the Reply (R. 29(c) and (d) RoP).
2. Division
LD Mannheim
3. UPC number
UPC_CFI_365/2023
4. Type of proceedings
infringement action
5. Parties
Claimant: FUJIFILM Corporation
Defendant(s): Kodak GmbH, Kodak Graphic Communications GmbH, and
Kodak Holding GmbH
6. Patent(s)
EP 3 511 174 B1
7. Jurisdictions
UPC, Germany
8. Body of legislation / Rules
Art. 3(c), Art. 28, Art. 25 to 28, Art. 63(1), Art. 68(1), Art. 67(1), Art. 64, Art. 82(2) UPCA
R. 24(g), R. 25(1)(b), (c), R. 29(c) and (d) RoP
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
