Tilman Pfrang, LL.M. | 6th May 2025
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.