This month, the UPC and the EPO Enlarged Board addressed important questions on jurisdiction, selective revocation, claim construction, and procedural fairness. From pre-June 2023 acts to fee payment timing, these decisions further consolidate the UPC’s interpretive autonomy while fostering convergence with EPO practice.
Central Division Paris (UPC_CFI_198/2024, Decision of 28 May 2025) – Selective Revocation Permissible; EP Revoked for Germany Only
In a revocation action brought by Aylo Premium against DISH concerning EP 3 822 805 B1, the Central Division Paris confirmed that a claimant may limit the territorial scope of revocation to selected Contracting Member States. Relying on Art. 76(1) UPCA and the ne ultra petita principle, the Court found no procedural bar to revoking only the German part of the patent. Art. 34 UPCA governs the effect of decisions, not the relief parties may request. Despite a pending EPO opposition hearing, the UPC proceeded, citing its one-year timetable and procedural maturity. The patent was ultimately revoked for added matter under Art. 123(2) EPC: the term “highest quality streamlet” was found to generalise beyond the disclosure of step-wise bitrate upgrades in the application. The ruling affirms both the UPC’s jurisdictional flexibility and its strict stance on intermediate generalisations.
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Court of Appeal (UPC_CoA_156/2025, Order of 2 June 2025) – UPC Jurisdiction Confirmed over Pre-UPCA Acts and Opt-Out Gap
In a widely anticipated decision, the Court of Appeal confirmed the UPC’s jurisdiction over infringement acts predating 1 June 2023 and over acts committed during a prior opt-out. The appeal stemmed from an action filed by Esko-Graphics against XSYS relating to EP 3 742 231. XSYS had argued that the UPC lacked competence due to the timing of the alleged acts and a previously effective opt-out. The Court, however, found that jurisdiction under Art. 32 UPCA depends on the filing date of the action, not the timing of the infringing acts. A withdrawal of the opt-out re-subjects the patent to UPC jurisdiction in full, with no carve-out for interim periods. The CoA invoked international treaty principles (Vienna Convention) and the harmonisation goals of the UPCA. While the Court reserved judgment on whether substantive UPCA law applies to pre-2023 acts, its findings on competence provide welcome clarity for litigants navigating the transition period.
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EPO Enlarged Board of Appeal (G 1/24, Decision of 18 June 2025) – Description Must Always Inform Claim Construction
In a landmark ruling, the Enlarged Board of Appeal of the EPO abandoned the “only-if-unclear” approach to claim construction, holding that claims must always be interpreted in light of the description and drawings – regardless of linguistic ambiguity. The decision brings EPO practice into alignment with the UPC Court of Appeal’s NanoString order (UPC_CoA_335/2023) and the inventive step analysis recently adopted by the Munich Local Division. The Board expressly cited the UPC’s jurisprudence as persuasive, emphasising the need for consistency across Europe. G 1/24 reaffirms that Art. 84 EPC and Art. 69 EPC (and its Protocol) are complementary: clarity is assessed at the drafting stage, but for patentability, the entire disclosure must be considered.
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Court of Appeal (UPC_CoA_286/2025, Order of 23 June 2025) – Timely Fee Payment Requires Transfer Instruction, Not Receipt
In this order, the Court of Appeal addressed whether the court fee must be received or merely instructed at the time of filing. Referring to Art. 70(2) UPCA and Rule 371.1 RoP, the Court ruled that it is sufficient for the party to have given the order to transfer the fee at the time of lodging the pleading. Actual receipt may occur later. The Court reasoned that parties should not be penalised for banking delays, particularly in cross-border proceedings. It also rejected reliance on internal CMS metadata (such as PDF lodging timestamps) for determining timeliness. This clarification provides much-needed legal certainty for practitioners handling filings across multiple jurisdictions within the UPC.
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This month’s decisions and orders highlight key developments in added matter, inventive step, second medical use claims, procedural timing for validity attacks, and preliminary injunctions with EU-wide reach. The UPC continues to refine its procedural and substantive standards.
Local Division Paris (UPC_CFI_163/2024, Decision of 23 May 2025) – Intermediate Generalisations and Territorial Scope under Art. 34 UPCA
In a decision dated 23 May 2025 concerning EP 3 155 936 B1 (juice squeezing module), the Paris Local Division allowed Hurom’s unconditional request to amend the claims but ultimately revoked the amended patent for lack of inventive step. The Court rejected objections under Art. 123(2) EPC, holding that the allegedly omitted features were not inextricably linked to the claimed subject-matter. It found the amended claims directly and unambiguously derivable from the application as filed. However, inventive step was denied over a combination of two prior art documents (CN202365584U and KR20130016748A). The Paris panel also clarified that objections under Art. 34 UPCA relate to the territorial effect of UPC decisions – not to jurisdiction – and may be raised outside the preliminary objection stage under Rule 19 RoP. The infringement claim concerning Poland failed for lack of factual substantiation, and the patent was revoked in all designated UPCA states.
Local Division Düsseldorf (UPC_CFI_505/2024, Decision of 13 May 2025) – Pleading Ignorance Rejected and No Infringement of Second Medical Use Claim
On 13 May 2025, the Düsseldorf Local Division dismissed an infringement action concerning EP 3 536 712 B1, a divisional claiming a second medical use of PCSK9 inhibitors for reducing Lp(a). The Court ruled that the evidence submitted did not establish that Repatha® was used for the claimed therapeutic indication. The decision is notable procedurally for its strong rejection of general denials or “pleading ignorance”, a practice permitted under § 138(4) ZPO in German civil litigation. The UPC held that under Rule 171.2 RoP, facts not specifically contested are deemed admitted and that evasive denials are insufficient. Substantively, the Court confirmed the claim’s validity under Art. 54(5) EPC and held that scientific uncertainty around Lp(a) metabolism justified an inventive step.
Local Division Düsseldorf (Procedural Order of 8 May 2025) – New Prior Art or New Lines of Attack in Revocation Replies Require Justification
In a procedural order issued on 8 May 2025, the Düsseldorf Local Division clarified the requirements for introducing new prior art or new arguments in reply to a revocation counterclaim under Rule 263 RoP. The Court held that such replies represent an amendment of the case and are only admissible if the defendant demonstrates due diligence and absence of procedural prejudice to the claimant. Even new attacks based on already-cited prior art must meet this threshold if introduced for the first time at the reply stage.
Court of Appeal (UPC_CoA_768/2024, Order of 30 April 2025) – Court Grants Cross-Border Preliminary Injunction and Clarifies Claim Construction
On 30 April 2025, the Court of Appeal overturned the Milan Central Division’s refusal and issued a preliminary injunction covering 17 UPCA member states (excluding Romania) in favour of Insulet Corporation against EOFlow. The dispute concerned patch pump devices and EP 4 201 327. The CoA clarified that claim construction is a question of law for the Court, not experts, and found that the prior art did not disclose the specific clutch mechanism required by the claim. Inventive step was confirmed, and infringement was deemed likely. The absence of a cease-and-desist declaration justified the assumption of risk of continuation. The Court granted broad relief, including pan-European injunctive relief, disclosure obligations under Art. 67 UPCA, penalty payments, and full cost reimbursement. The case confirms that the UPC may grant sweeping provisional measures even beyond countries where the patentee actively markets its product.
This month’s editions addresses critical issues of jurisdiction, transparency, procedural fairness, and substantive patent law. Highlights include further refinement of the rules governing public access to documents, clarification on suspensive effect in appeal proceedings, the Milan Division’s affirmation of jurisdiction over non-UPCA designations, and the reliance on the problem-solution approach in assessing inventive step.
Court of Appeal (UPC_CoA_5/2025, Decision of 25 April 2025) – Clarification on Public Access to Case Documents
In its decision of 25 April 2025, the Court of Appeal addressed a request under Rule 262.1(b) RoP filed by Nicoventures Trading Ltd, seeking public access to the written pleadings and evidence in the appeal case APL_289/2025. The Court clarified the scope and limits of public access to documents in UPC proceedings, stressing that such access must be justified, specific, and cannot include forward-looking requests for future submissions not yet filed. Although the Court partially granted access, it rejected broad or speculative document requests, underscoring the UPC’s commitment to balancing transparency and procedural safeguards. The ruling also highlighted that the Court may assess whether the requested disclosure would interfere with the fairness of the proceedings or the protection of confidential information.
Court of Appeal (UPC_CoA_312/2025 et al., Decision of 17 April 2025) – High Threshold for Granting Suspensive Effect in Appeals
On 17 April 2025, the Court of Appeal dismissed an application for suspensive effect filed by Kodak following the Mannheim Local Division’s infringement decision in favour of Fujifilm. The Court confirmed that appeals before the UPC do not automatically suspend enforcement of first-instance decisions. Under Rule 223 RoP, suspensive effect may only be granted if there is a risk of serious and irreparable harm, and the appeal is not prima facie unfounded. Kodak had relied on uncontested factual circumstances, but the Court held that these alone do not establish an automatic legal consequence. Instead, the Court independently assessed whether those facts justified legal relief.
Local Division Milan (UPC_CFI_792/2024, Decision of 8 April 2025) – Affirmation of UPC Jurisdiction Beyond UPCA Territory
In a jurisdictional ruling dated 8 April 2025, the Local Division Milan confirmed that the UPC may exercise jurisdiction over infringement actions involving national parts of a European patent validated outside the territory of the UPCA. The dispute arose between two Italian parties—X System S.r.l. and Alpinestars S.p.A.—concerning EP 3 938 451. Alpinestars had objected to the UPC’s jurisdiction with respect to designations in countries not participating in the UPCA, but the Court rejected this argument. Drawing on Art. 31 UPCA and the CJEU’s BSH/Electrolux decision (C-339/22), the Milan Division reasoned that international jurisdiction arises from the domicile of the defendant in a UPCA Member State, even where the alleged infringement involves non-UPCA territories. The Court emphasised that the UPC is entitled to assess infringement for EP validations outside the UPCA if connected to the same facts and parties.
Local Division Munich (UPC_CFI_501/2023, Decision of 4 April 2025) – EPO Problem-Solution Approach Confirmed for Inventive Step Assessment
In its judgment of 4 April 2025, the Munich Local Division upheld the validity of EP 3 669 828 B2 in proceedings brought by Edwards Lifesciences Corporation against Meril Life Sciences Pvt Ltd. The case concerned a counterclaim for revocation filed alongside infringement proceedings, requiring the court to examine inventive step. Applying the well-established EPO problem-solution approach, the panel identified the closest prior art, the distinguishing features of the invention, and the objective technical problem (note: I does not appear as if this is to be understood as deviation from the “any-realistic-starting-point-practice” of the UPC to which the LD Munich explicitly refers). The Court’s reasoning confirms that the UPC will align closely with EPO Boards of Appeal jurisprudence on Art. 56 EPC issues. The decision also addressed group infringement under Art. 33(1)(b) UPCA and clarified the role of claim construction in interpreting functional features. The result reflects the UPC’s growing jurisprudence on substantive patent law and its harmonisation with existing European standards.
Court of Appeal (UPC_CoA_289/2025, Procedural Order of 24 March 2025) – Strict Limits on Additional Written Submissions
In a procedural order dated 24 March 2025, the Court of Appeal ruled on Amazon’s request to submit further written observations shortly before an oral hearing. The Court denied the request, reiterating that additional written submissions beyond the appeal brief and response are only permitted in exceptional cases under Rule 242.2 RoP. It emphasised the importance of procedural efficiency and fairness, particularly in appeal proceedings where timelines are more compressed. The decision underscores that parties must raise all relevant arguments in their principal briefs unless newly emerged circumstances justify an exception.
Local Division Paris (UPC_CFI_760/2023) – Jurisdiction over Non-UPC EP Designations Confirmed
On 21 March 2025, in a procedural order concerning EP 4 153 830, the Local Division Paris rejected a preliminary objection challenging the UPC’s jurisdiction over the UK, Spanish, and Swiss designations of a European patent. The court affirmed international jurisdiction based on Art. 31 UPCA, Brussels I bis and the Lugano Convention, drawing heavily on the CJEU’s recent BSH v. Electrolux ruling (C-339/22). It confirmed that infringement actions concerning EP parts in non-UPCA states may be brought before the UPC, provided the defendant is domiciled in a contracting Member State. Art. 34 UPCA was not addressed, but the court underlined its obligation to follow Union law in line with CJEU case law.
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Local Division Mannheim (UPC_CFI_159/2024) – Intertemporal Law and Post-BSH Jurisdictional Clarity
On 11 March 2025, the Mannheim Division tackled jurisdictional issues and the applicable substantive law in infringement proceedings relating to EP 2 028 981. Infringement acts post-1 June 2023 were governed by the UPCA, whereas earlier acts remained subject to national law. For continuous acts spanning the UPCA’s entry into force, the UPCA was applied, subject to each party’s right to rely on more favourable national provisions. Importantly, the right to information under Arts. 67–68 UPCA was interpreted to cover the pre-UPCA period. Following BSH, the court separated proceedings concerning non-UPC states (e.g. PL, TR, UK) to ensure procedural fairness and expedite enforcement.
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Local Division Düsseldorf (UPC_CFI_459/2023) – No Tolerance for Late Invalidity Attacks
On 7 March 2025, in a revocation counterclaim involving EP 2 011 218 B1, the Düsseldorf Division dismissed arguments on patent validity raised for the first time during oral proceedings. The court reaffirmed the UPC’s strict procedural discipline, holding that surprise tactics undermine fairness and must be avoided. Late arguments may be admissible if raised with the reply to the counterclaim defence, but not at the hearing. The approach is consistent with the earlier decision of the Central Division Paris (UPC_CFI_265/2023), which has taken a particularly rigorous stance on procedural discipline.
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Court of Appeal (UPC_CoA_382/2024) – General Injunctions Based on Single Act Confirmed
On 14 February 2025, in provisional proceedings between Abbott Diabetes Care and Sibionics, the Court of Appeal confirmed that a general injunction may be issued on the basis of a single proven infringing act, such as offering a product for sale. The court held that Art. 62(1) UPCA does not require limiting injunctions to specific products or acts. It further rejected urgency objections, noting that Abbott’s technical investigation justified the delay. On substantive issues, the CoA addressed claim construction (means-plus-function), intermediate generalisations, and the availability of Art. 67 UPCA measures (e.g. origin and distribution info) in interim proceedings.
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UPC Asserts Long-Arm Jurisdiction Beyond EU Borders
In a groundbreaking decision (Case No. UPC_CFI_376/2023) – as a prequel to the CJEU decisions summarized below – the UPC extended its authority to address patent infringement acts occurring outside the European Union, including the UK. The court justified its jurisdiction by noting that the alleged infringer operated in multiple EU jurisdictions covered by the UPC, aligning with Article 71(b) of the Brussels Ibis Regulation. This precedent allows patent holders to pursue coordinated enforcement across borders, even in non-UPC territories, potentially complicating litigation strategies for businesses operating both within and outside the UPC’s direct reach.
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Munich Local Division Addresses Jurisdiction and Preliminary Objections
On February 5, 2025, the UPC’s Local Division in Munich clarified procedural and jurisdictional issues regarding counterclaims for revocation, specifically addressing a second counterclaim for revocation lodged by the same party before the same Division. The UPC Local Division in Munich confirmed that Rule 19 of the Rules of Procedure, which regulates preliminary objections to jurisdiction, extends to counterclaims for revocation. Further, the Munich LD ruled that Article 33(2) UPCA prevents multiple counterclaims on the same patent between the same parties within the same division.
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Clarification on In-House Legal Representation
In an order dated February 11, 2025, the UPC’s Court of Appeal clarified the concept of “independence” under Article 48(5) UPCA. The court confirmed that corporate representatives or major shareholders with extensive administrative and financial powers within a company may not represent that company before the UPC. However, in-house counsel and European patent attorneys employed by the litigant may act as representatives if they can demonstrate the capacity to act independently, ensuring unbiased representation.
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CJEU Ruling on Cross-Border Patent Infringement and Jurisdiction
The Court of Justice of the European Union (CJEU) issued a landmark decision (Case C‑339/22, BSH Hausgeräte GmbH v Electrolux AB) on February 25, 2025, clarifying jurisdiction in cross-border patent disputes. The ruling determined that when patent validity is challenged solely as a defense in an infringement action, the court of the defendant’s domicile retains jurisdiction. This applies even if the patent is validated in non-EU countries, allowing the domicile court to assess validity inter partes. This decision may enhance the UPC’s attractiveness but could also introduce competition from national courts in handling such disputes.
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The Local Division in Brussels: Equivalent Patent Infringement
In Case No. UPC_CFI_376/2023, the Brussels Local Division explored the doctrine of equivalents through the application of two tests: the Function-Way-Result (FWR) test and the Insubstantial Differences test. These tests, more commonly associated with U.S. patent law, were used to evaluate whether an accused device for the treatment of sleep apnea infringed on a patent in a non-literal manner. The court found that while the accused product performed a similar function to the patented device, it did so in a fundamentally different way, with key structural differences that affected the redirection of forces. This difference prevented a finding of equivalence under both tests. The decision marks an important precedent in the UPC’s approach to equivalence, as it integrates analytical methods inspired by international patent jurisprudence to assess technical claims and infringement.
UPC Court of Appeal Confirms Jurisdiction Over Damage Determination
The UPC Court of Appeal clarified that the court has jurisdiction to determine damages arising from a national court’s decision on patent infringement. The case involved a scenario where a national court, outside the UPC system, had ruled on the merits of infringement, and the issue of financial compensation was brought before the UPC. The Court of Appeal found that under Article 32(1)(f) UPCA, the UPC retains the authority to assess and award damages linked to infringement decisions, even if the decision on the merits was issued by a national court.
Public Access to UPC Proceedings Restored
In a procedural ruling, the UPC Court of Appeal reinforced its commitment to transparency by reinstating public access to court hearings and records. The court clarified that privacy in UPC proceedings is an exception rather than the rule, justified only when essential to protect trade secrets, sensitive commercial data, or other confidential information. The parties must proactively request the exclusion of confidential information to prevent public disclosure, as the default rule prioritizes transparency.
Paris Central Division: Application for Review of an Order
The Paris Central Division addressed an application for procedural review under Rule 333 of the UPC Rules of Procedure and found that an application for review of a (security) order can be admissible “even in absence of a specific and direct legal provision”. However, an application to modify (security) orders must be grounded in new, material facts, not a re-evaluation of previously decided issues. Further, the Local Division in Paris found that the UPC’s calculation of security for costs is tied to the objective value of the proceedings at filing. Later amendments to claims, such as reduced damages, are irrelevant to recalibrating this amount.
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1. FRAND Developments in Munich
The Munich Local Division underscored implementer obligations in FRAND disputes, emphasizing the need for prompt counteroffers, adequate security, and clear disclosure of SEP use. Failure to meet these obligations can lead to limited review of the SEP holder’s licensing offer. While the court aligned with the Huawei v. ZTE framework, it highlighted procedural strictness that places the burden on implementers.
2. FRAND Precedents in Mannheim
The Mannheim Local Division set a significant precedent in Panasonic v. Oppo, focusing on good-faith negotiations under the FRAND framework. The court clarified that implementers must show unconditional willingness to conclude a license, and fragmented jurisdictional proposals will not suffice. This decision aligns with traditional German jurisprudence but establishes a robust foundation for UPC SEP litigation.
3. Common General Knowledge at the UPC
The Paris Central Division provided insights into the treatment of common general knowledge in patent validity disputes. The Central Division rejected an overly expansive view of common general knowledge, holding that it must be widely accepted and easily accessible. This decision reflects a commitment to a stricter evidentiary standard.
4. Revocation Action in Paris
The Paris Central Division reaffirmed the importance of the “front-loaded” procedural system under the Rules of Procedure (RoP) of the UPC. Parties must present their full case, including all relevant facts and evidence, as early as possible. However, the Court underscored that this principle must be balanced with proportionality and procedural efficiency, ensuring that parties are not burdened with unnecessary tasks or excessive documentation.
1. Infringement Based on the Doctrine of Equivalence at the UPC
On November 22, 2024, the UPC’s Local Division in The Hague ruled on European Patent EP2137782, owned by Plant-e Knowledge B.V. The court found that the defendant’s devices, while not literally infringing, did so under the doctrine of equivalence. The court applied a four-step test to determine equivalence, assessing technical equivalence, fair protection for the patentee, reasonable legal certainty for third parties, and the novelty and inventiveness of the allegedly infringing product over prior art. This approach aligns closely with German and Dutch practice, indicating a harmonized application of the doctrine across jurisdictions.
2. The Court of Appeal Unlocks the Door for Patents Previously Excluded by the Helsinki Division
On November 12, 2024, the UPC’s Court of Appeal clarified the application of Article 83 of the UPC Agreement (UPCA). The case involved the withdrawal of an opt-out for a patent during the UPC’s transitional period. The Court of Appeal determined that the term ‘action’ in Article 83 UPCA includes all actions within the UPC’s jurisdiction, not just infringement and revocation actions. Importantly, the court specified that only actions initiated during the transitional period restrict the withdrawal of an opt-out, thereby allowing certain patents to fall under the UPC’s competence despite prior national proceedings.
3. The Central Division Paris – Review of All Granted Claims if Attacked and if Potential Claim Amendments Are Not Allowed
On November 5, 2024, the Central Division of the UPC in Paris addressed European Patent EP 3 498 115 B1. The court emphasized its authority under Article 65(3) UPCA to limit or partially revoke patents independently of amendment applications by the patent owner. It underscored that litigation is directed by the parties’ requests, which shape the court’s review process. The court is required to examine each granted claim individually if challenged, aligning with the standard practice of the German Federal Patent Court. Additionally, the court reiterated that claim interpretation is a question of law that it can address at any stage of the proceedings.
4. The Local Division Düsseldorf – Importance of the “Characterized in That” Clause
In a decision concerning European Patent EP 1 793 917, the Local Division Düsseldorf provided insights into patent claim interpretation. The court highlighted that the scope of a patent claim should not be strictly limited to specific embodiments depicted in the patent drawings. Instead, claims should be interpreted based on the understanding of a skilled person, considering the entire patent description and drawings. The court also noted that prior art should not unduly constrain claim interpretation unless the patent itself makes specific distinctions from the prior art. Furthermore, the court discussed publication rights, stating that publishing a decision should be reserved for instances where other legal measures do not sufficiently protect the claimant.
Chapter 1: Timing of Auxiliary Requests in Munich
The Munich Central Division found that auxiliary requests submitted after the closure of written proceedings are too late, even if presented as an immediate reaction to a finding of the Court of Appeal in a parallel case. Further, the Central Division clarified that international jurisdiction must always be examined by the court not withstanding whether or not the parties raise this issue timely. Last, the Central Division did not stay the revocation action despite of a quite matured German revocation proceedings.
Chapter 2: Group Defence in Düsseldorf
The Local Division Düsseldorf addressed how multiple defendants can independently manage their defence in patent infringement cases. On the downside: If a defence strategy of any defendant includes that the patent being allegedly infringed is invalid, such defendant is required to file a counterclaim for the patent’s annulment. On the plus side: The co-defendants may jointly file such revocation action.
Chapter 3: The Court of Appeal – Understanding “Frontloaded” Procedures
The CoA clarified that the idea of front-loaded proceedings, which aims to have parties present comprehensive cases from the start, does not preclude them from further developing their arguments or submitting additional evidence as the proceedings evolve. As a general rule, the Court of Appeal does not issue cost orders in branched-off proceedings that do not conclude the action. Instead, the costs are assessed at the end of the main proceedings, considering the overall outcome and the parties’ success or failure, as per Article 69 of the UPCA.
Chapter 4: Interim Measures by the Court of Appeal
The CoA found the subject matter of claims 1 and 13 inventive, underscoring the lack of “incentive/motivation” in the prior art. The Court exercised discretion in admitting new arguments regarding the prior art that were not accepted in the first-instance proceedings due to their late submission. As a general rule, submissions after the conclusion of oral hearings are not considered in the court’s decision-making process. Also as a general rule, the timeframe for requesting a Preliminary Injunction starts when the claimant becomes aware or should have been aware of the infringement. Last, the CoA clarified that irreversible damage is not necessary for granting preliminary injunctions, focusing instead on the balance of interests between the patent holder and the alleged infringer.