Tilman Pfrang, LL.M. | 27th August 2026
This month’s edition addresses parallel UPC and national proceedings, the necessity requirement for preliminary injunctions, conditional counterclaims for revocation, and the interaction between the UPCA and national law for financial claims arising before and after patent grant.
Local Division Paris – Merz v Viatris – Parallel national proceedings
30 July 2026 – UPC_CFI_1901/2026
The Paris Local Division held that an earlier UPC application for provisional measures does not make the UPC the court first seised for a subsequent infringement action on the merits. PI proceedings and proceedings on the merits are separate proceedings pursuing different objectives for the purposes of Art. 29 Brussels I Recast. Although parallel French proceedings for revocation, non-infringement and a compulsory licence were considered related to the UPC action under Art. 30 Brussels I Recast, the Court declined to stay the UPC proceedings. It emphasised the discretionary nature of Art. 30 and considered that a stay would undermine the objective of swift and efficient UPC proceedings, particularly as the UPC was expected to decide before the French court.
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Local Division Hamburg – Cybex v Nuna – Necessity of preliminary measures
10 August 2026 – UPC_CFI_1321/2026
The Hamburg Local Division granted a PI despite the challenged child-seat system having been on the market for more than a year. Applying the necessity requirement developed by the Court of Appeal in Biolitec v Light Guide, the Court considered the long product lifespan relevant: once a family selected the defendant’s system, that customer could effectively be lost to the applicant for several years. The Court also confirmed that preliminary measures may be based on a claim version narrower than the patent as granted, but refused to admit further auxiliary requests submitted only with the reply where newly introduced features left the defendant insufficient time to address validity.
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Court of Appeal – Emboline v AorticLab – Conditional counterclaims for revocation
17 August 2026 – UPC_CoA_40/2026
The Court of Appeal confirmed that a counterclaim for revocation may be made conditional upon a finding of infringement. Since infringement and revocation are separate actions, the Court characterised this as an inter-procedural condition and applied Rule 263.3 RoP by analogy. Making an existing counterclaim conditional merely limits the circumstances in which it is to be decided and requires no particular justification. However, a conditional counterclaim must still be fully pleaded and remains pending even if the condition is not fulfilled. The principal advantage may therefore be avoiding an unnecessary validity decision rather than saving costs: substantial validity costs may already have been incurred, and the Munich Local Division had ordered the counterclaimant to bear the costs attributable to the counterclaim after non-infringement was found.
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Court of Appeal – Yellow Sphere and Härtwich v Knaus Tabbert – Provisional protection & applicable law
17 August 2026 – UPC_CoA_365/2025 and UPC_CoA_367/2025
The Court of Appeal held that compensation for use of an invention during the provisional protection conferred by a published European patent application is governed by national law, even where the relevant use occurred after 1 June 2023. The UPCA provides jurisdiction for such claims but no substantive basis for compensation. By contrast, damages for infringement of a granted patent are governed by national law for acts completed before 1 June 2023 and by the UPCA for later acts. The applicable law must also be assessed separately for different remedies. The decision may result in different limitation periods for pre-grant and post-grant use; under German law, a residual claim concerning pre-grant use may potentially remain available for up to ten years, although the Court did not expressly decide how this interacts with Art. 72 UPCA.
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