FUJIFILM v Kodak Graphic Communications (CFI, 2 August 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 2 August 2024 (UPC_CFI_355/2023, ORD_40822/2024), the judge-rapporteur of the Düsseldorf Local Division refused FUJIFILM leave under Rule 263 RoP to extend to all designations its auxiliary requests to amend EP 3 594 009, which were limited to the German designation, but classified the new set of requests as a subsequent request to amend under Rule 30.2 RoP and allowed it. The Kodak defendants’ request for an extension of time was rejected. The order settles the procedural route for amending the patent mid-proceedings.

Question

Is the deletion of a territorial limitation from auxiliary requests a change of claim under Rule 263 RoP or a subsequent request to amend the patent under Rule 30.2 RoP?

Decision

As the requests of 4 June 2024 were, on their wording, limited to the German designation, extending them is not a mere clarification (ground 1). Rule 263 RoP does not cover amendment of the patent, which falls under Rule 30.2 RoP, a strict preclusion rule that Rule 263 must not be used to circumvent (ground 2). Since Art. 34 UPCA makes a single decision the rule, a territorial limitation of amendments requires objective reasons, which the claimant did not give: the limitation was ineffective and the new requests are admitted under Rule 30.2 RoP (ground 3). An extension under Rule 9.3(a) RoP is exceptional and the defendants had already been able to comment (ground 4).

Key points for practice

• Amendment of the patent cannot proceed under Rule 263 RoP: it is governed solely by Rules 30.1 and 30.2 RoP.
• Practical point: a territorial limitation of auxiliary requests needs objective reasons, failing which it has no effect in light of Art. 34 UPCA.

Provisions applied

Agreement on a Unified Patent Court

Art. 34

Rules of Procedure

Rules 9.3(a), 30.1, 30.2 and 263

Case law cited

Panasonic v Guangdong OPPO Mobile Telecomm, Mannheim Local Division, 27 June 2024, Seoul Viosys v expert e-Commerce, Düsseldorf Local Division, 20 January 2024

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.