Unified Patent Court – Landmark Decisions

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UPC_CFI_1235/2025; 2026-2-26

ORIGINAL-HEADNOTE:
A judge-rapporteur whose procedural order or decision is subject to review by the panel pursuant to R. 333 of the RoP may, on the basis of the specific circumstances of the individual case and considering the interests of the parties to the proceedings, be entitled and, if applicable, also obliged to suspend their order or decision pursuant to R. 335 RoP. Such a suspension serves to ensure that the forthcoming order or decision of the seized panel (so-called „panel review“) is not interfered with by compliance with the order or decision, which could otherwise render the panel review ineffective.

AI FEEDBACK:
– The headnote recognises R. 335 RoP as a mechanism for preserving the practical effectiveness of a panel review under R. 333 RoP.
– The judge-rapporteur must assess the individual circumstances and balance the parties‘ interests; suspension may be appropriate or even necessary where immediate compliance would have irreversible consequences.
– Example: after inspection of pleadings had initially been granted, Huawei requested review by the full panel. Because disclosure of the pleadings could not meaningfully be undone, access was postponed until the review proceedings had been finally concluded.
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#actionable #pre-grant-proceedings UPC 829/2024; 2026-2-24

ORIGINAL-KEYWORDS:
Claim interpretation. Intermediate product. Numerical ranges. Composition claims. Sugar compositions. Marker molecule. Product-by-process features. Added matter. Inventive step of intermediate products. Inextricable link. Subsequent Auxiliary Requests. Revocation.

ORIGINAL-HEADNOTE:
1. The patentee is responsible for drafting claims that adequately define the subject matter for which protection is sought. This is particularly the case for composition claims containing numerical ranges of ingredients. For such claims, the skilled person may reasonably expect that the patentee is precise and diligent in specifying the components of a claimed composition.
2. Absent an inextricable link between a claimed composition and an inventive process for the production of a known end-product, no inventive step can be acknowledged for an otherwise non-inventive composition relied upon as an intermediate product.

AI FEEDBACK:
– The first headnote places the drafting risk on the patentee, especially where a composition claim uses numerical ranges: the claim must precisely identify which components and quantities define the protected product.
– The second headnote limits reliance on an inventive downstream process. An intermediate composition is not inventive merely because it may be used in such a process; the composition and process must be inextricably linked.
– Example: EP 2 611 800 claimed xylose-rich sugar compositions containing specified marker molecules and oligosaccharide ranges. The Court found added matter and lack of inventive step and revoked the patent because the claimed composition was not inseparably tied to an inventive process for producing the known end-product xylitol.
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UPC_CoA_10/2026; 2026-2-24

ORIGINAL-KEYWORDS:
Public access to the Register

ORIGINAL-HEADNOTE:
– Reasoned requests to the Registry for written pleadings and evidence (access to documents pursuant to R. 262.1(b) RoP), lodged at the Court of First Instance, shall be made to the relevant Division. Similarly, reasoned requests for written pleadings and evidence, lodged at the Court of Appeal, shall be made to the Court of Appeal.
– The provision that a decision will be taken by the judge-rapporteur after consulting the parties (R. 262.1(b) RoP) ensures that the judge adjudicating on access is familiar with the case file, separately for each instance.
– Such separate responsibility for the Court of First Instance and Court of Appeal is in line with the provisions on the court files in the Statute and the Registry Rules. The Statute makes a clear distinction between the register kept by the Registrar (Art. 23 UPCS) and the sub-registries kept by the Deputy-Registrar (Art. 25 UPCS). The latter concerns the records of the cases before the Court of First Instance. In accordance with this distinction, the RegR provide that the Deputy-Registrar shall keep the “case files of proceedings before the CFI” (R. 56 RegR), which include all pleadings and documents filed with the Court of First Instance (R. 59 RegR), and shall ensure access to such Court of First Instance case files by third parties (R. 66 RegR). For the management of case files before the Court of Appeal, the Registrar shall have those duties (R. 73 RegR).
– Re-lodging on appeal of documents lodged at the Court of First Instance is normally not called for since the Court of Appeal shall consult the file of the proceedings before the Court of First Instance pursuant to R. 222.1 RoP. Such consultation does not generate any copies of the documents into the file of the proceedings before the Court of Appeal.
– If a party, for reasons of its own, re-lodges documents on appeal, this not only represents additional work for parties and the Court alike, but it also means that members of the public can chose to request access to those documents from the Court of First Instance, the Court of Appeal, or if there is reason for it, both.
– A request for written pleadings and evidence must be specified and cannot be made in terms which would require the Court to search and select documents based on relevance criteria set up by the requesting party.

AI FEEDBACK:
– Access under R. 262.1(b) RoP is instance-specific: the relevant first-instance division controls its own file, while the Court of Appeal controls the appeal file.
– An applicant must identify the requested documents with sufficient precision. The Court is not required to search the file and select documents according to broad relevance criteria formulated by the applicant.
– Example: Gowling WLG obtained specified appeal pleadings after redaction of personal data, but its request for „all exhibits“ concerning infringement or the balance of interests was dismissed as ambiguous; documents that had not been lodged in the appeal file could not be obtained from the Court of Appeal.
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UPC_CoA_883/2025, UPC_CoA_892/2025; 2026-2-24

ORIGINAL-KEYWORDS:
Rehearing (Art. 81(1) UPCA; R. 245 RoP); fundamental procedural defect

ORIGINAL-HEADNOTE:
Requests for a rehearing based on a fundamental procedural defect pursuant to Art. 81(1)(b) UPCA and R. 247(e and d) RoP (fundamental procedural defect)

AI FEEDBACK:
– Rehearing is an extraordinary remedy rather than a further appeal. It is reserved for a procedural defect so fundamental that it is intolerable for the legal system and affected the outcome.
– The Court need not expressly address every argument in detail, and disagreement with its assessment of arguments or evidence is not sufficient for rehearing.
– Example: Suinno challenged the EUR 300,000 security for costs and the subsequent default dismissal of its infringement action. The Court found that Suinno’s arguments had already been heard and that court orders must be complied with unless and until changed, so it rejected both the rehearing applications and the request for suspensive effect.
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#actionable #pre-grant-proceedings UPC 337/2025; 2026-2-24

ORIGINAL-KEYWORDS:
Method claim. Added matter. Novelty. Disclosure of numerical ranges. Inventive step. Selection of starting point. Interdependency. Interdependent claim features. Inventive concept underlying the invention. Motivation. Pointer. Predictability. Reasonable expectation of success.

ORIGINAL-HEADNOTE:
1. A realistic starting point is typically a prior art disclosure as a whole. Absent a specific reason or pointer in the disclosure itself (or based on common general knowledge) to do so, the selection of a particular example composition as a “starting point”, merely because it happens to come “closest” to the claimed subject matter in terms of structural components, bears the risk that such selection itself already involves hindsight.
2. Where the features of a patent claim, in an interdependent way, even if they are not synergetic in the sense of having a special combination effect, provide a solution to the objective problem, ignoring these interdependencies and dividing the objective problem up into separate problems amounts to hindsight reasoning which is to be avoided in the assessment of inventive step.

AI FEEDBACK:
– The first headnote warns against cherry-picking the structurally closest example from a prior-art document unless the document or common general knowledge gives the skilled person a reason to start there.
– The second headnote requires the claimed features to be assessed as an interdependent combination. Splitting them into separate partial problems may reconstruct the invention with hindsight.
– Example: TCL relied on selected examples from D19, D20 and D27 against Corning’s alkali-free display-glass method. The Court found no pointer to combine tin fining, the claimed MgO range, the oxide ratios and a downdraw process, and therefore dismissed the revocation action.
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#actionable #post-grant-proceedings UPC_CFI_26/2025, UPC_CFI_375/2025; 2026-2-19

ORIGINAL-KEYWORDS:
Timeliness evidence of prior state of the Art; disclosure content of a commercial brochure; language of patent vs of the proceedings

ORIGINAL-HEADNOTE:
1. Due to the front-loaded approach of the UPC system R 25.1 RoP requires the counterclaim for revocation to contain an indication of the facts relied on (R 25.1 (c) RoP) and the evidence relied on, where available and an indication of any further evidence which will be offered in support (R 25.1 (d) RoP). The parties are under an obligation to set out their full case as early as possible (Preamble RoP 7, last sentence) and to provide all their legal and factual arguments, and any evidence supporting it in a timely manner. Whenever possible, Counterclaimant is obliged to submit its arguments, facts and attachments in its counterclaim of revocation. Submitting evidence for prior state of the Art or for prior use at a later time requires a reasonable justification regarding to the timeliness.
2. A commercial brochure, as a stand-alone piece of the prior art will be evaluated as such by the person skilled in the art. Already from the outset, obtaining the physical product that is being advertised in a commercial brochure is not a valid approach to establishing the disclosure of the stand-alone publication that the commercial brochure is.
3. According to Art 70 (1) EPC, the text of a European patent in the language of the proceedings shall be the authentic text in any proceedings before the European Patent Office and in any Contracting State. For EP415 the language of the patent is German. Although the language of the proceedings is English the court bases its interpretation und considerations on the German text of the patent in suit and reads in this way the English translations of the patents claims as it is published in EP 3 705 415 B1.

AI FEEDBACK:
– The UPC’s front-loaded procedure requires invalidity facts, attacks and supporting evidence to be presented with the counterclaim whenever possible; later prior-art or prior-use material needs a convincing justification for its timing.
– A brochure is assessed by what the brochure itself discloses. A later-obtained physical sample cannot enlarge the technical teaching of that publication.
– The authentic language of the granted patent controls claim interpretation even where the language of the proceedings is different.
– Example: Sabert relied on a Solut! brochure and later physical-product and prior-use material against EP 3 705 415. The Court assessed the brochure as a stand-alone disclosure, treated the later material restrictively, interpreted the German claim text, and ultimately dismissed both Messerle’s infringement action and Sabert’s counterclaim for revocation.
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UPC_CFI_1733/2025; 2026-2-17

ORIGINAL-KEYWORDS:
Change of the language of the proceedings – Art. 49 (5) UPCA and R. 323 RoP

ORIGINAL-HEADNOTE:
When deciding on an application to change the language of the proceedings to the language in which the patent was granted for reasons of fairness, all relevant circumstances must be considered. While having regard to the respective resources of the parties, the need for strategic coordination and technical support in a common working language for the purposes of the Defence has been identified as a decisive factor in the balancing of all interests. This takes into account the fact that the language primarily chosen is not only a financial burden on the Defendant(s), but also a disadvantage in view of strict time limits that must be met in UPC proceedings.

AI FEEDBACK:
– The fairness assessment under Art. 49(5) UPCA and R. 323 RoP is not limited to translation costs. It also covers the practical ability to coordinate strategy and technical input under the UPC’s strict deadlines.
– Relevant circumstances include the parties‘ resources, the patent language, the technical field’s working language, the stage of the proceedings and the need for further translation arrangements.
– Example: most Xiaomi defendants were based in non-German-speaking countries, the mobile-communications evidence and ETSI specifications were in English, and the patent had been granted in English. The language of the proceedings was therefore changed from German to English without additional translation or interpretation conditions.
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UPC_CFI_351/2024, UPC_CFI_595/2024; 2026-2-11

ORIGINAL-KEYWORDS:
Publication; Art. 80 UPCA

ORIGINAL-HEADNOTE:
If a defendant has used its own website to create the impression that there has been no patent infringement, it may be justified under Art. 80 UPCA to not only allow the claimant to publish the Court’s decision, but also to require the defendant to publish the operative part of the decision on its website.

AI FEEDBACK:
– Publication under Art. 80 UPCA may serve a corrective function, not merely publicise the claimant’s success.
– Where a defendant used its own communication channel to assert non-infringement, requiring publication on that same channel can be a proportionate way to remove the false impression.
– Example: Katun stated on its website that it was confident its products for Canon applications were non-infringing. After finding infringement, the Court ordered the defendants to publish the operative part on their websites for one month and allowed Canon to publish the decision in five industry journals.
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#actionable #post-grant-proceedings UPC_CoA_8/2026; 2026-2-9

ORIGINAL-KEYWORDS:
Eintragung der einheitlichen Wirkung; Artikel 3 Absatz 2 der Verordnung Nr. 1257/2012

AI-TRANSLATED-KEYWORDS:
Registration of unitary effect; Article 3(2) of Regulation No 1257/2012

ORIGINAL-HEADNOTE:
Artikel 3 Absatz 1 der Verordnung Nr. 1257/2012 kann nicht dahingehend ausgelegt werden, dass die Eintragung der einheitlichen Wirkung für ein erteiltes europäisches Patent zulässig wäre, das die Benennung eines der teilnehmenden Mitgliedstaaten nicht umfasst.

AI-TRANSLATED-HEADNOTE:
Article 3(1) of Regulation No 1257/2012 cannot be interpreted as permitting the registration of unitary effect for a granted European patent that does not include the designation of one of the participating Member States.

AI FEEDBACK:
– Unitary effect requires the European patent to have been granted with the same claims for all participating Member States. The Regulation does not permit a partially unitary patent that excludes one current participating state.
– The Court applied the wording of Article 3(1) and rejected an interpretation that would create an exception not contained in the Regulation.
– Example: Papst Licensing’s patent did not designate Malta because the parent application predated Malta’s accession to the EPC. Its request for unitary effect excluding Malta was rejected, and the Court of Appeal dismissed the appeal.
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UPC_CFI_658/2025; 2026-2-2

ORIGINAL-KEYWORDS:
Cost decision; PI proceedings; proceedings on the merits; ceiling; no shift of costs

ORIGINAL-HEADNOTE:
1. Costs incurred in PI proceedings are reimbursable separately, even though the decision on the reimbursability of these costs is to be taken in a uniform cost procedure following the proceedings on the merits. Therefore, the ceilings for the PI proceedings and the proceedings on the merits must be determined separately (follow up to UPC_CFI_121/2025 (LD Düsseldorf), Decision of 22 April 2025, Headnote 2 – Ortovox v Mammut).
2. If the costs of the PI proceedings are reimbursable separately within a ceiling that applies specifically to these proceedings, this also means that the costs of both the PI proceedings and the main proceedings are capped by the applicable ceiling. It is inadmissible to mix the costs of the PI proceedings with those of the proceedings on the merits, or to shift them from one proceeding to the other, even if the results of the PI proceedings may be used in subsequent proceedings on the merits.
3. In the event of partial success, the applicable ceiling shall correspond to the proportion of success of the party seeking cost recovery. Accordingly, in a first step, the reimbursable representation costs must be determined based on the quota set by the Court in accordance with Art. 69 UPCA in conjunction with R. 118.5 RoP. In a second step, the ceiling, which is also reduced in accordance with the quota set by the Court, must then be applied.

AI FEEDBACK:
– PI proceedings and proceedings on the merits remain separate for cost-ceiling purposes even where reimbursement is decided in one later cost procedure. Unused capacity under one ceiling cannot be transferred to the other proceeding.
– In cases of partial success, both the recoverable representation costs and the applicable ceiling are reduced according to the same success quota; the quota is applied before the reduced ceiling.
– Example: 10x Genomics was entitled to recover 70% of its costs. The Court therefore reduced the EUR 200,000 PI ceiling to EUR 140,000 and the EUR 400,000 merits ceiling to EUR 280,000 instead of pooling the two ceilings.

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UPC_CoA_930/2025; 2026-1-29; EOFlow v Insulet

ORIGINAL-KEYWORDS:
– R. 262A RoP
– Art. 67 UPCA
– R. 191 RoP
– Communication of confidential information due to a court order or decision

ORIGINAL-HEADNOTE:
There is no implicit limitation on the use of information received as a result of the other party’s compliance with an order to communicate information pursuant to Art. 67 UPCA and R. 191 RoP. It is necessary to file a confidentiality request with regard to information which has to be communicated according to a Court order or decision (see CoA 14 October 2025, UPC_CoA_699/2025, Kodak v Fujifilm, para. 45). R. 262A RoP applies at least mutatis mutandis.

AI FEEDBACK:
– The Court distinguishes protection against public access under R. 262.2 RoP from restrictions on the opposing party’s use of information. An order requiring information to be communicated does not itself create an implied purpose limitation or confidentiality obligation.
– A party seeking to restrict the recipient’s use of information communicated under Art. 67 UPCA and R. 191 RoP must make a specific confidentiality application. R. 262A RoP applies at least by analogy to such court-ordered communications.
– Example: EOFlow had supplied Insulet with accounting and distribution information under earlier court orders without obtaining a use restriction. EOFlow could not later rely on an implied limitation to prevent Insulet from using that information in the penalty-payment proceedings, so its request to restrict Insulet’s use was denied.
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UPC_CoA_631/2025, UPC_CoA_632/2025; 2026-1-26; Ericsson v ASUS

ORIGINAL-KEYWORDS:
Appeal; application for the protection of confidential information.

ORIGINAL-HEADNOTE:
1. When deciding on the measures for the protection of confidential information and assessing their proportionality, the Court must take into account the need to ensure the right to an effective remedy and to a fair trial, the legitimate interests of the parties and, where appropriate, of third parties, and any potential harm for either of the parties, and, where appropriate, for third parties, resulting from the granting or rejection of such measures.
2. In the event that one of the parties is a legal person, that party should be able to propose a natural person or natural persons who ought to form part of that circle of persons entitled to have access so as to ensure proper representation of that legal person, subject to appropriate judicial control to prevent the objective of the restriction of access to evidence and hearings from being undermined.
3. Whether the person proposed by a party may be granted access to the confidential information must be determined on the basis of the relevant circumstances of the case, including the role of that person in the proceedings before this Court, the relevance of the confidential information to the performance of that role and the trustworthiness of the person in keeping the information confidential.
4. The fact that a person is an employee of a party is, as a general rule, not sufficient to deny access to that person. The exclusion of employees would severely restrict a party’s freedom to choose who will represent it in the proceedings. Furthermore, an employee of a party will often be better placed to present the party’s view, provide and review relevant information and instruct the representatives than persons external to the party’s organization. Consequently, access for a party’s employee will often be essential to ensure compliance with the right of that party to an effective remedy and to a fair trial. For that reason, and as a general rule, the interest of the party in having full access for at least one of its employees outweighs the interests of the applicant, even if the imposition of an “External Eyes Only” regime would be preferable from the perspective of safeguarding confidentiality.
5. Furthermore, where the confidential information concerns a licence agreement between a party and a third party, the potential harm for this third party, resulting from allowing access to an employee of the other party to the proceedings, may be mitigated by requiring that employee to refrain from involvement in patent licensing negotiations with the third party for a certain period. Such a bar prevents the employee from using such confidential information in these negotiations, whether intentionally or not. It thereby facilitates compliance with the confidentiality regime and provides all parties with a greater degree of legal certainty, as the involvement of the employee in negotiations is easier to establish than the employee’s use – inadvertent or otherwise – of the confidential information in such negotiations.

AI FEEDBACK:
– Confidentiality measures under R. 262A RoP require a concrete proportionality assessment. The Court must balance secrecy and possible harm to parties or licence counterparties against the opposing party’s rights to an effective remedy, a fair trial and informed participation in the case.
– A corporate party should normally be allowed to nominate at least one employee for the confidentiality circle. Employment by the party is not, by itself, a reason for exclusion; the Court instead examines that person’s function, need for the information and reliability.
– Risks arising from access to third-party licence agreements can be addressed by targeted safeguards rather than a complete External Eyes Only regime, particularly a temporary licensing bar.
– Example: ASUS needed an employee to examine Ericsson’s confidential licence agreements and the data used in the parties’ FRAND analysis. The Court allowed one employee from each party to have access but prohibited those employees from participating in patent-licensing negotiations with the relevant counterparties for five years.
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UPC_CoA_755/2025, UPC_CoA_757/2025, UPC_CoA_791/2025, UPC_CoA_793/2025; 2026-1-26; Sun Patent v Vivo

ORIGINAL-KEYWORDS:
Appeal; application for the protection of confidential information, R 262A RoP; legal team, internal support staff.

ORIGINAL-HEADNOTE:
(i) When deciding on the measures for the protection of confidential information and assessing their proportionality, the Court must take into account the need to ensure the right to an effective remedy and to a fair trial, the legitimate interests of the parties and, where appropriate, of third parties, and any potential harm for either of the parties, and, where appropriate, for third parties, resulting from the granting or rejection of such measures.
(ii) In the event that one of the parties is a legal person, that party should be able to propose a natural person or natural persons who ought to form part of that circle of persons entitled to have access so as to ensure proper representation of that legal person, subject to appropriate judicial control to prevent the objective of the restriction of access to evidence and hearings from being undermined.
(iii) Whether the person proposed by a party may be granted access to the confidential information must be determined on the basis of the relevant circumstances of the case, including the role of that person in the proceedings before this Court, the relevance of the confidential information to the performance of that role and the trustworthiness of the person in keeping the information confidential.
(iv) The fact that a person is an employee of a party is, as a general rule, not sufficient to deny access to that person. The exclusion of employees would severely restrict a party’s freedom to choose who will represent it in the proceedings. Furthermore, an employee of a party will often be better positioned to present the party’s view, provide and review relevant information and instruct the representatives than persons external to the party’s organization. Consequently, access for a party’s employee will often be essential to ensure compliance with the right of that party to an effective remedy and to a fair trial. The interest of the party in having full access for, at least, one of its employees therefore, as a general rule, outweighs the interests of the applicant, even if imposing an ‘External Eyes Only’ regime would be preferable from the perspective of safeguarding confidentiality.
(v) Furthermore, where the confidential information concerns a licence agreement between a party and a third party, the potential harm for this third party resulting from allowing access to one or more employees of the other party to the proceedings, may be mitigated by requiring said employee(s) to refrain from involvement in patent licensing negotiations with the third party for a certain period. Such a bar prevents said employee(s) from using such confidential information in these negotiations, whether intentionally or not. It thereby facilitates compliance with the confidentiality regime and provides all parties with a greater degree of legal certainty, as the involvement of the employee(s) in negotiations is easier to establish than the employee’s use – advertent or otherwise – of the confidential information in such negotiations.
(vi) Nothing in the UPC Agreement nor in the Rules of Procedure provides for the liability of the UPC representative of a party in the event of a breach of a duty of confidentiality ordered by the Court under R. 262A RoP. Rather, in the event of a breach of the confidentiality obligation ordered by the Court, a penalty payment may be imposed on a party to the proceedings.
(vii) Although it is the party that may be sanctioned for non-compliance with the confidentiality obligation ordered by the Court through the imposition of a penalty payment, and not the party’s legal representative in its own – whether professional or personal – capacity, it does not release said representative from its rights and obligations under the UPC Agreement and the Rules of Procedure. Said obligations include the requirements to comply with the code of conduct adopted pursuant to R. 290.2 RoP as well as the requirements of the proper administration of justice, failing which the Court may exclude said representative from the proceedings by way or order under the conditions set forth under R. 291.1 RoP.

AI FEEDBACK:
– The first five headnotes apply the same proportionality approach as in Ericsson v ASUS: a corporate party normally needs meaningful internal participation, and access by an employee should be assessed case by case rather than excluded categorically.
– A licensing bar can protect third-party licence information while preserving the party’s ability to understand and litigate a FRAND dispute. The restriction should be tailored to the relevant counterparties and an appropriate period.
– The final two headnotes separate the party’s procedural liability from the professional duties of its representative. A penalty for breach of a confidentiality order is imposed on the party, not personally on its UPC representative, although the representative remains responsible for complying with professional and procedural duties and may be excluded for serious misconduct.
– Example: Sun Patent relied on comparable licence agreements in two FRAND actions and sought to exclude Vivo employees. The Court allowed three designated Vivo employees access subject to a two-year licensing bar, clarified that the legal team includes internal law-firm support staff bound by the order, and removed the first-instance provision imposing personal liability on Vivo’s representative.
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UPC_CFI_1064/2025; 2026-1-26; Bobst Manchester v Nordmeccanica

ORIGINAL-KEYWORDS:
Change of the language of the proceedings – Art. 49 (5) UPCA and R. 323 RoP

ORIGINAL-HEADNOTE:
– When deciding on a request to change the language of the proceedings to the language of the patent on grounds of fairness, all relevant circumstances – in particular those related to the case and the respective position of the parties – shall be considered. If the outcome of balancing of interest is equal, the position of the defendant is the decisive factor.

AI FEEDBACK:
– A language-change request under Art. 49(5) UPCA and R. 323 RoP is decided through an overall fairness assessment. Relevant factors include the language of the technology and evidence, the parties’ nationality and working languages, their ability to coordinate internally, the stage of the case and any effect on efficiency or delay.
– When the interests remain evenly balanced, the defendant’s position prevails because the claimant generally chose the forum and filing time, whereas the defendant must prepare its defence under strict procedural deadlines.
– Example: Bobst, an English company, brought a German-language infringement action against the Italian company Nordmeccanica concerning an English-language patent. Because neither party used German internally, English predominated in the technical material and the request was made at an early stage, the Court changed the language to English without requiring translations.
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UPC_CFI_808/2025; 2026-1-23; Guardant Health v Sophia Genetics

ORIGINAL-KEYWORDS:
Provisional measures. Unreasonable delay. R. 211.4 RoP. Added matter. Sufficient degree of certainty-Infringement- Burden of proof. R. 211.2 RoP.

ORIGINAL-HEADNOTE:
1) Unreasonable delay under R. 211.4 RoP: In the present case, a three-month period constitutes a reasonable delay to prepare the application for provisional measures by gathering the necessary evidence, given that the case involves several patents and a complex and sophisticated technology.
2) Added matter (divisional patent): It is decisive whether all the elements are directly and unambiguously derivable from the patent as originally filed (in the present case: the PCT application) or whether the latter is used as some kind of reservoir from which scattered fragments can be combined, in which case there is a whole series of different ‘inventions’ included in the PCT application.
3) Added matter: From the selections that have been made without any clear indication in the earlier application, the Court concludes that the invention as now worded in the granted claim cannot directly and unambiguously be derived from the patent as filed.
4) Demonstration of an infringement with a sufficient degree of certainty (R. 211.2 RoP): The burden of proof for the alleged infringement lies with the party invoking it. Applicant cannot rely solely on the disputed information from a press release to demonstrate how Defendants‘ software processes data. Additional in-depth investigations into how Defendants’ platform operates or more technical documentation on the ‚accused software‘ would have been necessary.

AI FEEDBACK:
– The urgency assessment under R. 211.4 RoP starts when the applicant has, or should have obtained with due diligence, enough facts and evidence to bring a provisional-measures application with a reasonable prospect of success. Complexity, the number of patents and the accessibility of technical evidence affect what preparation period is reasonable.
– For a divisional patent, every claimed combination must be directly and unambiguously derivable from each relevant earlier application. The original PCT application cannot be treated as a reservoir from which isolated features and alternatives are assembled without a pointer to the specific combination.
– At the provisional-measures stage, validity and infringement must be established with the required degree of certainty. The applicant carries the burden of proving how the accused product or software implements the claim; marketing statements or a general press release are not a substitute for technical evidence.
– Example: Guardant obtained a key MSK-DDM manual only in July 2025 and filed on 29 August 2025, so the three-month preparation period was reasonable. Nevertheless, the Court rejected provisional measures because two asserted patents were more likely than not invalid for added matter and the evidence, largely a press release, did not sufficiently show how Sophia Genetics’ software processed data under the third patent.
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UPC_CFI_1506/2025; 2026-1-20; Nagravision v Pinterest

ORIGINAL-KEYWORDS:
Change of the language of the proceedings – Art. 49 (5) UPCA and R. 323 RoP

ORIGINAL-HEADNOTE:
– While the domiciliation of parties in countries where the language of the proceedings initially chosen is an official language must be taken into account to decide on an application pursuant to R. 323 RoP, due consideration shall also be given to the need of several Defendants to communicate and coordinate for the purposes of the dispute. The speed and efficiency of this coordination is necessarily affected if the proceedings are not conducted in their usual working language. This drawback is of particular importance in identifying a fairness issue considering the strict time limits set by the UPC rules of procedure.

AI FEEDBACK:
– Domicile and official-language connections are relevant to a request under R. 323 RoP, but they are not decisive in isolation. The Court must also assess how the selected language affects the defendants’ practical ability to coordinate, obtain instructions and prepare a defence.
– The coordination burden has particular weight where several companies in an international group are defendants, because UPC time limits are strict and translation through a language not used internally can slow decision-making.
– Example: the Pinterest defendants were established in Germany, Ireland and the United States, but their common group working language was English. Although German was relevant because Pinterest Germany was domiciled in Germany and Nagravision was based in multilingual Switzerland, the Court changed the proceedings from German to English so the defendants could coordinate efficiently without delaying the case.
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UPC_CFI_350/2025; 2026-1-12; WhiteWater West Industries v American Wave Machines

ORIGINAL-KEYWORDS:
decision by default

ORIGINAL-HEADNOTE:
Rule 355 of the Rules of Procedure (‘RoP’)

AI FEEDBACK:
– R. 355 RoP allows a decision by default only after the Court verifies the procedural prerequisites: a request by the non-defaulting party, effective and timely service, expiry of the relevant deadline, and facts that justify the requested remedy. Default does not mean that the claim is granted automatically.
– The Court retains discretion and may confine its examination to the facts and grounds needed to support the remedy rather than deciding every invalidity attack pleaded in the original action.
– Example: American Wave was served with WhiteWater’s revocation action on 8 May 2025 but filed no defence by the 8 July deadline. The Court nevertheless examined the inventive-step case and found claim 1 obvious starting from D1 combined with D3 before partially revoking EP 2 728 089 by default.
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UPC_CoA_328/2025; 2026-1-9; Juul Labs v NJOY

ORIGINAL-KEYWORDS:
Court fees, reimbursement

ORIGINAL-HEADNOTE:
R. 370.9 (b) RoP has been amended from 1 January 2026, providing for reimbursement of court fees with 50 % in case of the withdrawal of an action before the closure of the written procedure instead of, as previously, 60 %. The entry into force provides that amendments shall enter into force on 1 January 2026. The amendments apply only to those actions and applications filed after 31 December 2025.

AI FEEDBACK:
– The amendment to R. 370.9(b) is prospective. The reduced 50% refund applies only to actions and applications filed after 31 December 2025; an earlier-filed appeal remains governed by the previous 60% refund rule when withdrawn before the written procedure closes.
– Withdrawal of an appeal is permitted where no final decision has been issued and the other party has no legitimate interest in obtaining a judgment. As a general rule, the withdrawing appellant is treated as the unsuccessful party for costs.
– Example: after the EPO Board of Appeal dismissed Juul Labs’ parallel appeal and NJOY consented to withdrawal, the UPC appeal was closed. Because UPC_CoA_328/2025 had been filed before 1 January 2026, Juul Labs received a 60% refund of the appeal fee and was ordered to bear NJOY’s appeal costs.
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UPC_CoA_257/2025; 2026-1-9; VMR Products v NJOY

ORIGINAL-KEYWORDS:
Court fees, reimbursement

ORIGINAL-HEADNOTE:
According to R. 370.9(b)(iii) RoP as it read until 31 December 2025, in the event of the withdrawal of the action (R. 265 RoP), the party obliged to pay the Court fees shall receive a refund of 20 % if the action is withdrawn before the closure of the oral procedure. This provision has been deleted following the amendments to R. 370.9 RoP. The entry into force provides that amendments shall enter into force on 1 January 2026. The amendments apply only to those actions and applications filed after 31 December 2025.

AI FEEDBACK:
– The former R. 370.9(b)(iii) continues to govern proceedings filed before 1 January 2026. Under that version, withdrawal after the written stage but before closure of the oral procedure generated a 20% court-fee refund, even though this refund category was deleted for later-filed cases.
– The temporal rule turns on when the action or application was filed, not on the date of the withdrawal decision.
– Example: VMR Products withdrew its appeal after the parties had already been summoned to an oral hearing for 9 February 2026. Because the appeal had been filed under the pre-2026 rules and was withdrawn before the oral procedure closed, the Court refunded 20% of the appeal fee and ordered VMR Products to bear NJOY’s appeal costs.
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UPC_CoA_237/2025; 2026-1-9; Juul Labs v NJOY

ORIGINAL-KEYWORDS:
Court fees, reimbursement

AI FEEDBACK:
– The amendment reducing the pre-closure-of-written-procedure refund from 60% to 50% applies only to actions and applications filed after 31 December 2025. Earlier-filed appeals retain the previous refund percentage.
– A withdrawing appellant normally bears the appeal costs as the unsuccessful party. The limited exception for an unprovoked revocation action followed by an immediate surrender did not apply because Juul Labs had defended the patent in the first-instance proceedings.
– Example: the EPO Board of Appeal had dismissed Juul Labs’ parallel appeal concerning EP 3 430 921, NJOY consented to withdrawal, and the UPC proceedings were closed. Since the UPC appeal pre-dated 1 January 2026, Juul Labs obtained a 60% fee refund but had to pay NJOY’s reasonable and proportionate appeal costs.
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UPC_CoA_5/2025; 2026-1-9; Juul Labs v NJOY

ORIGINAL-KEYWORDS:
Court fees, reimbursement

AI FEEDBACK:
– The Court applies the version of R. 370.9(b) in force when the action or application was filed. The 2026 amendment therefore does not reduce the refund available in an appeal filed before the amendment’s effective date.
– Consent by the respondent removed any legitimate interest in a judgment on the merits, allowing the withdrawal. The appellant remained the unsuccessful party for the costs of the appeal.
– Example: after the EPO Board of Appeal upheld the revocation of EP 3 498 115 by dismissing Juul Labs’ appeal, Juul Labs withdrew UPC_CoA_5/2025 with NJOY’s consent. The Court closed the case, awarded a 60% refund under the old rule and ordered Juul Labs to bear NJOY’s appeal costs.
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UPC_CFI_730/2025; 2026-1-5; Nera Innovations v Xiaomi

ORIGINAL-KEYWORDS:
Application for a cost decision, Rule 151 RoP; reasonable cost for representation, R. 152 RoP; Article 48(4) UPCA; appeal proceedings pursuant Rule 220.2 RoP; ceiling of reimbursable costs.

ORIGINAL-HEADNOTE:
1. In principle, a party is always entitled to be represented before the EPO by a legal representative and a patent attorney jointly, i.e. by two authorised representatives, Art. 48(4) UPCA.
2. However, appeal proceedings under Rule 220.2 RoP concerning a specific procedural issue do not require the involvement of more than one authorised representative, R. 151.1 R.P.
3. The upper limit of reimbursable representation costs cannot be used for the assessment of costs in appeal proceedings under R. 220.2 R.P. concerning procedural sub-issues.
4. A party to the dispute must always be allowed to participate in an oral hearing before the UPC with at least one natural person and to incur the corresponding travel expenses.
5. Even if a party is successful in proceedings for the assessment of costs under Rule 150 of the RoP, it must generally bear its own costs incurred in the cost proceedings.

AI FEEDBACK:
– A party may generally choose joint representation by a lawyer and a patent attorney, but reimbursement depends on what was reasonably necessary for the particular proceeding. A narrow R. 220.2 appeal about a procedural issue does not automatically justify the cost of several representatives.
– The general ceiling for reimbursable representation costs is only a maximum safeguard; it does not make otherwise unnecessary expenditure reasonable and is not an appropriate valuation tool for a procedural sub-issue appeal.
– Reasonable travel costs for at least one representative and one natural person attending the oral hearing may be recovered. By contrast, the Rules do not normally provide a further costs award for the summary cost-assessment proceeding itself.
– Example: the appeal concerned only whether the claim could be served on Xiaomi’s Chinese entities through the German affiliate. The defendants used a team of three lawyers, but the Court treated one lawyer as sufficient and reduced the representation costs by two thirds, while allowing the proportionate travel costs for one lawyer and one company participant.

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#actionable #litigation #post-grant-proceedings UPC_CFI_315/2024; 2026-1-28; Labrador Diagnostics v bioMérieux

ORIGINAL-KEYWORDS:
Bifurcation; Central Division; amended claims

ORIGINAL-HEADNOTE:
1. The Local Division is bound to the new wording of the claims due to the amendment of the patent in suit by a decision of the Central Division in a bifurcated case.
2. In a bifurcated case in which the Court does not find on infringement, the question of validity is no longer decisive for the infringement action.

AI FEEDBACK:
– In bifurcated UPC proceedings, the infringement division must apply the claims in the form determined by the Central Division; it cannot revert to the granted wording or reconstruct a broader version.
– Here, the Milan Central Division’s amendment made a “device” comprising both the reagent-unit array and the user-applied sample unit a structural claim requirement. The bioMérieux instruments had reagent strips and sample vials in separate locations without the claimed connecting device, so the Düsseldorf Local Division found no infringement.
– Once infringement failed, questions concerning entitlement and the patent’s validity, including the EPO’s preliminary view, were no longer decisive. For example, the claimant’s attempt to treat the spatially separated sample vial and reagent strip as conceptually linked could not replace the missing structural feature.
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UPC_CoA_917/2025; 2026-1-26; Merz v Viatris Santé

ORIGINAL-KEYWORDS:
Request for confidentiality

ORIGINAL-HEADNOTE:
– According to case-law, only R. 262A RoP allows the Court to restrict the use of confidential information by the opposing party and its representatives. A request under R. 262.2 RoP that certain information of written pleadings or evidence be kept confidential does not automatically grant provisional protection against the disclosure of information by the other party (UPC_CoA_70/2025, order of 1 August 2025, Strabag vs Swarco et al, paras 19 and 20). Furthermore, and as set out repeatedly, a decision on a request according to R. 262.2 RoP is generally not made until a reasoned request from the public under R. 262.1(b) RoP is lodged. This is because requests under R. 262.2 RoP are made in relation to future requests for access to information by the public, not in relation to the other parties to the proceedings.
– An Application for a confidentiality order, with or without establishment of a confidentiality club, under R. 262A RoP shall be made at the same time as lodging a document containing the information or evidence. In this case the information should be uploaded as HC (highly confidential). Where the information is of such confidential nature that only a limited number of people should be allowed access to it, a so-called confidentiality club can be set up in accordance with R. 262A.6 RoP. Alternatively, it may – and must – be subject of a R. 262A RoP request if it is requested that the other party is only limited in its use of the confidential information in that it shall only be used for the purpose of the legal proceedings and may not be disclosed to third parties.
– As is apparent from R. 262A.3 RoP, a party’s written submissions and evidence are, in principle, made directly accessible to the other party without any restrictions as to its use or recipients, unless a simultaneous request is made under R. 262A.1 RoP when the document is lodged, or a statement is made that this information is protected under a previous order pursuant to R. 262A RoP either at first instance or on appeal.
– Absent an explicit request for a confidentiality order, or a statement that this information is protected under a previous order pursuant to R. 262A RoP either at first instance or on appeal, the Court will not treat a document as potentially containing confidential information in the sense of R. 262A RoP.
– This also applies if the document was uploaded by that party under HC code. Uploading a document under this code prevents access to it by the other party. A legal basis for uploading a document under HC code is lacking, and is also contrary to the legitimate interest of the other party to have unrestricted access to the documents lodged by the other party without delay, if there is no simultaneous application pursuant to R. 262A RoP.
– In such a situation, the Court will therefore as a matter of routine change the code to M to make it immediately available to the other parties to the procedure.

AI FEEDBACK:
– Rule 262.2 RoP addresses possible future access by the public; it does not restrict the opposing party’s access to or use of evidence. Protection against the opposing party requires a simultaneous application under Rule 262A RoP.
– Merely selecting the HC upload code has no independent legal effect. Without a Rule 262A application or reliance on an existing confidentiality order, the Court will normally change the code to M so the other party receives immediate access.
– For example, Merz uploaded Exhibit 823 as HC and requested only that it be withheld from the public under Rule 262.2. Because no Rule 262A application was filed, the Court declined to decide the public-access request at that stage and did not treat the exhibit as protected against Viatris Santé.
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Case number not stated in the anonymized decision; 2026-1-26; EPLC Rules

ORIGINAL-KEYWORDS:
EPLC Rules

ORIGINAL-HEADNOTE:
– The one-year time period set out in Rule 12.1 of the EPLC Rules is not discriminatory.

AI FEEDBACK:
– Rule 12.1 EPLC Rules creates a substantive transitional route by which certain specifically listed, non-accredited courses temporarily count as an appropriate qualification. It is not merely a procedural deadline for filing a registration request.
– The one-year limitation was held objectively justified by the aim of ensuring qualified representation while making enough representatives available when the UPC began operating. It applied to all European Patent Attorneys, and other qualification routes remain available.
– For example, the applicant relied in August 2025 on a “Kandidatenkurs Fischbachau” certificate from 1989. Because the transitional period had expired on 3 June 2024, that course no longer established the required qualification, and the petition for review was rejected.
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UPC_CFI_999/2025; 2026-1-26; ALD France v Nanoval

ORIGINAL-KEYWORDS:
Strohmann, Parteiidentität im Sinne von Art. 33 Abs. 4 S. 2 EPGÜ

AI-TRANSLATED-KEYWORDS:
Straw man; identity of parties within the meaning of Art. 33(4), second sentence, UPCA

ORIGINAL-HEADNOTE:
1. Für das Vorhandensein eines eigenen Interesses an einer Nichtigkeitsklage neben der bereits erhobenen Nichtigkeitswiderklage eines verbundenen Unternehmens ist eine eigene Geschäftstätigkeit des Klägers maßgeblich. Auf den Grad der Verbindung der betroffenen Unternehmen kommt es dabei nicht an. Verbundene Unternehmen sind nicht schon dann „dieselbe Partei“ im Sinne von Art. 33 Abs. 4 S. 2 EPGÜ, wenn es sich um Mutter- und Tochterunternehmen handelt. Auch der Grad der Kontrolle ist kein maßgebliches Kriterium, soweit das betroffene Unternehmen eine eigenständige Geschäftstätigkeit ausübt.
2. Die Prüfung der Einheitlichkeit des Unternehmens im Rahmen einer Kartellklage hat andere Voraussetzungen und hat anderweitige Interessen zu berücksichtigen, so dass die dort entwickelten Grundsätze nicht übertragbar sind.

AI-TRANSLATED-HEADNOTE:
1. For the existence of a claimant’s own interest in a revocation action alongside a counterclaim for revocation already brought by an affiliated company, the claimant’s own business activity is decisive. The degree of affiliation between the companies concerned is irrelevant. Affiliated companies are not “the same party” within the meaning of Article 33(4), second sentence, UPCA merely because they are parent and subsidiary companies. The degree of control is likewise not a relevant criterion where the company concerned conducts independent business activities.
2. The assessment of the unity of an undertaking in the context of an antitrust action is subject to different requirements and takes account of different interests, so the principles developed there are not transferable.

AI FEEDBACK:
– The “same parties” exception in Article 33(4), second sentence, UPCA requires genuine party identity or interests aligned so completely that a judgment against one entity would bind the other. Corporate affiliation or control alone is insufficient where each company conducts its own business.
– A straw-man finding concerns an entity that exists only formally and lacks real business activity, assets or employees. ALD France had substantial turnover, assets and personnel, which supported an independent interest in challenging the patent.
– Competition-law concepts treating a corporate group as one economic unit serve different purposes and cannot automatically determine party identity under the UPC jurisdiction rules.
– For example, ALD France was allowed to pursue its central revocation action even though its German parent had already filed a revocation counterclaim in Munich; the request to dismiss or stay the Paris action was rejected.
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#actionable #litigation UPC_CFI_702/2024 and UPC_CFI_369/2025; 2026-1-16; IMC Créations v Mul-T-Lock

ORIGINAL-KEYWORDS:
Brevet unitaire modifié, Date d’effet de la limitation, Brevet européen hors JUB maintenu tel que délivré, Personne du métier, Connaissances générales communes et documents accessibles au public.

AI-TRANSLATED-KEYWORDS:
Amended unitary patent, Effective date of the limitation, European patent outside the UPC maintained as granted, Person skilled in the art, Common general knowledge and publicly accessible documents.

ORIGINAL-HEADNOTE:
1. Le brevet européen devenu unitaire et modifié de manière inconditionnelle, prend effet à la date de délivrance du brevet européen.
2. La contrefaçon de la part nationale du brevet européen délivré par un Etat hors JUB, doit être appréciée au regard du brevet tel que délivré initialement. Le brevet en litige présente un risque non négligeable d’annulation, par les juridictions de l’Etat de délivrance, après modification inconditionnelle du brevet unitaire.
3. La personne du métier n’est qu’un simple exécutant. Un document non accessible au public n’appartient pas aux connaissances générales communes.

AI-TRANSLATED-HEADNOTE:
1. A European patent with unitary effect that is unconditionally amended takes effect, as amended, from the date of grant of the European patent.
2. Infringement of the national part of a European patent in a state outside the UPC must be assessed by reference to the patent as originally granted. Following an unconditional amendment of the unitary patent, the patent in suit faces a non-negligible risk of revocation by the courts of the state concerned.
3. The person skilled in the art is merely an implementer. A document that was not accessible to the public does not form part of common general knowledge.

AI FEEDBACK:
– The unconditional limitation of the unitary patent was treated as effective retroactively from the patent’s grant date, not merely from the date on which the proprietor filed the amended claims.
– The Swiss national part remained in its originally granted form because the UPC amendment affected only the patent with unitary effect. The limitation used to overcome the validity attack created a serious, non-negligible risk that the unamended Swiss part was invalid, so the UPC rejected the Swiss infringement claims.
– The skilled person was treated as capable of routine implementation but not inventive reconstruction. Accordingly, a non-public industrial drawing could not be used as common general knowledge.
– For example, the MVP 1000 lock was held to infringe amended claims 1 and 6 in the UPC territories from 1 November 2023, while all claims based on the Swiss part of the patent were dismissed.
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UPC_CFI_100/2024 and UPC_CFI_411/2024; 2026-1-15; Ona Patents and Ekahau v Google

ORIGINAL-KEYWORDS:
Register, proprietor, Rule 25 RoP, Rule 42 RoP, Rule 8.6 RoP; direct infringement, indirect infringement

ORIGINAL-HEADNOTE:
1. The Rules of Procedure show that in constellations where a claimant wants to obtain a decision to remove the effects of a granted patent (be it the validity of the patent or the declaration that a specific act does not constitute an infringement) the law prioritizes the registration over the entitlement. Ratio legis is the legal certainty for the claimant. It does not have the burden to “search” the entitled proprietor.
2. If a product consists of different components, the alleged infringing product must show every claimed component. Cases where only certain features of a product are infringed may be examples for an indirect infringement (Art. 26 UPCA), but not for direct infringement (Art. 25 UPCA).

AI FEEDBACK:
– In revocation proceedings and actions seeking to remove a patent’s effects, the person entered in the patent register is the relevant proprietor for procedural purposes. A challenger is not required to investigate whether another entity may be substantively entitled to the patent.
– In this case, Ekahau was registered when Google filed the counterclaim, while Ona became registered during the proceedings. The register change determined which counterdefendant remained the proprietor; the unresolved entitlement dispute was immaterial because the Court found no infringement.
– Direct infringement of a product claim requires the accused product itself to contain every claimed component. A missing component located only on another product may support a properly pleaded indirect-infringement case, but not direct infringement.
– For example, the challenged Google phones and tablets did not contain the claimed controller, which was located on accessories such as earphones or watches. The direct-infringement claim therefore failed, and the late attempt to add indirect infringement was not admitted.
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UPC_CFI_628/2024 and UPC_CFI_125/2025; 2026-1-13; Emboline v AorticLab

ORIGINAL-HEADNOTE:
1. Patent infringement is not excluded by the fact that a device is normally operated in a non-infringing manner and customers therefore do not regularly make use of the patented teaching, as long as the use of the patented teaching remains possible when using the device. In the case of a medical device, however, the possibility of an irregular but patent-compliant use can only be considered as patent infringement if such use is in line with professional practice and the recognised rules of medical science.
2. The unconditional transition from a counterclaim to a dependent counterclaim, which is dependent on the occurrence of an intra-procedural condition (i.e. a finding of patent infringement by the Court), means that the counterclaim is limited in accordance with Rule 263.3 of the Rules of Procedure (RoP).
3. If, in accordance with the counterclaimant’s request, no decision is made on the Counterclaim, the counterclaimant must bear the costs for the counterclaim.

AI FEEDBACK:
– A device may infringe even when its usual operating mode is non-infringing, but for medical devices a merely imaginable use counts only when it is professionally acceptable and consistent with recognised medical standards.
– The FLOWer device could physically be pierced and retrieved with a hook, but doing so damaged the filter mesh and was at most an unconventional emergency measure, not a lege-artis use. The Court therefore found no infringement.
– At the oral hearing, AorticLab unconditionally limited its revocation counterclaim so that it would be decided only if infringement were found. This was a limitation under Rule 263.3 RoP; because the condition did not occur, the Court made no validity ruling.
– For example, although no decision was issued on the counterclaim, AorticLab had caused the related costs by choosing the conditional limitation and therefore had to bear those costs.
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UPC-CFI-1624/2025; 2026-1-13; Heraeus v Vibrantz

ORIGINAL-KEYWORDS:
Wiedereinsetzung in den vorherigen Stand bei Versäumung der Frist zur Einleitung eines Kostenfestsetzungsverfahrens bei Kostenquotelung; abweichende Meinung gem. Art. 36 der Statuten.

AI-TRANSLATED-KEYWORDS:
Re-establishment of rights following failure to meet the time limit for initiating cost-assessment proceedings where costs are apportioned; dissenting opinion pursuant to Art. 36 of the Statute.

ORIGINAL-HEADNOTE:
1) Bei einer Kostenquotelung sind beide Parteien gehalten, fristgerecht eine anteilige Kostenfestsetzung gem. Regel 151 der Verfahrensordnung zu beantragen.
2) Die Versäumnis, die Frist für einen Antrag auf Kostenfestsetzung gemäß R. 151.1 der Verfahrensordnung einzuhalten, kann nur durch Wiedereinsetzung in den vorigen Stand (R. 320 VerfO) geheilt werden (UPC_CoA_618/2024).
3) Zur gebotenen Sorgfalt im Sinne der Regel 320.1 der Verfahrensordnung gehört grundsätzlich die Kenntnis der Rechtsordnung sowie der hierzu ergangenen Entscheidungen, insbesondere des Berufungsgerichts. Ein etwaiges Verschulden ihres EPG-Vertreters muss sich die vertretene Partei zurechnen lassen.
4) Fehlende Rechtskenntnis genügt daher im Regelfall nicht als Wiedereinsetzungsgrund.
5) In der vorliegenden speziellen Fallkonstellation ist der Antragstellerin aber trotz anwaltlicher Vertretung die Verkennung der Rechtslage nicht anzulasten.

AI-TRANSLATED-HEADNOTE:
1) Where costs are apportioned, both parties must file a timely application for assessment of their respective share of costs under Rule 151 RoP.
2) Failure to comply with the time limit for an application for assessment of costs under Rule 151.1 RoP can be remedied only by re-establishment of rights under Rule 320 RoP (UPC_CoA_618/2024).
3) The due care required under Rule 320.1 RoP generally includes knowledge of the applicable law and the decisions rendered under it, particularly decisions of the Court of Appeal. Any fault of a party’s UPC representative is attributable to the represented party.
4) Lack of legal knowledge therefore does not normally constitute a ground for re-establishment.
5) In the specific circumstances of the present case, however, the applicant’s mistake as to the law was not attributable to it despite legal representation.

AI FEEDBACK:
– The majority held that a split costs order makes each party partially successful, so each must protect its own recoverable share by filing a Rule 151 cost-assessment application within the one-month period, even when one party expects to be the net payer.
– Missing that period can be cured only through Rule 320 re-establishment. Ordinarily, counsel’s legal mistake is attributed to the client and does not satisfy the due-care test.
– Re-establishment was nevertheless granted because the Rules did not clearly state that both parties had to file, the UPC case law was not settled, and the published dissent demonstrated genuine legal uncertainty.
– For example, Heraeus assumed that, as the net payer under a 60/40 allocation, it could raise its 40% share merely as an offset in Vibrantz’s cost proceeding. The Court found that assumption legally wrong but exceptionally excusable.
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#actionable #post-grant-proceedings UPC_CFI_433/2024; 2026-1-7; Microsoft v Suinno Mobile & AI Technologies Licensing

ORIGINAL-KEYWORDS:
stay of the proceedings; application to amend the patent; added subject-matter.

ORIGINAL-HEADNOTE:
1. The defendant in a counterclaim for revocation action is entitled to amend the patent, provided that the relevant application is included in the statement of defence (or, in any event, meets the filing deadline for this application) and contains the information referred to in Rule 30 ‘RoP’.
2. The requirements for an application to amend the patent concerning the filing deadline, the inclusion of at least one amendment, and the use of the official language of the patent are objective in nature; failure to comply with these leads to the inadmissibility of the application. Conversely, the assessment of clarity, the sufficiency of the explanation regarding validity and infringement, and the reasonableness of the number of amendments is a matter of judicial discretion. Based on the specific circumstances of the case, the Court may decline to examine amendments that are inadequately formulated, insufficiently explained, or excessive in number.
3. As a general rule, while the mere deletion of claims may not necessitate a consolidated document, any substantive amendment requires the applicant to submit a full set of the amended claims. In accordance with the principle of judicial neutrality, the Court is prohibited from assisting the party in drafting or clarifying amendments. Consequently, the proposed amendments must be immediately intelligible to the Court and the counterclaimant without requiring subjective reconstruction of the applicant’s intent, ensuring the accuracy of subsequent annotations in the official patent registers.

AI FEEDBACK:
– Rule 30 RoP gives the patent proprietor a right to defend a revocation counterclaim with amendments, but the application must be timely and must contain an actual amendment in the patent’s official language. Those threshold requirements are objective.
– Clarity, supporting explanations and the reasonable number of auxiliary requests require case-specific judicial assessment. For substantive changes, a complete consolidated claim set must normally be filed by the same deadline because the Court must remain neutral and cannot reconstruct or draft the proprietor’s case.
– Suinno’s Auxiliary Request II asked to delete dependent claims “as needed,” while Auxiliary Requests III-XVII proposed combinations without timely consolidated claim sets. Those requests were insufficiently clear and were not examined.
– For example, only Auxiliary Request I was properly formulated, but it amended claims 6, 10 and 12 and could not cure the added subject-matter found in claim 1. EP 2 671 173 was therefore revoked in its entirety.
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