Tilman Pfrang, LL.M. | 12th August 2025
June and July saw key decisions from the Court of Appeal and the Mannheim Local Division on representative qualifications, rehearing thresholds, territorial scope of UPC jurisdiction post-BSH, and confidential information access.
Court of Appeal (APL_32076/2025; UPC_CoA_614/2025, Order of 24 July 2025) – No Extensions Beyond Rule 12.1 Transitional Period for EPLC Eligibility
In a decisive order, the President of the Court of Appeal rejected a European Patent Attorney’s petition to be entered on the list of UPC representatives based on a non-accredited Italian course completed prior to 2020. The request was filed after the one-year transitional period under Rule 12.1(a) of the EPLC Rules, which expired on 3 June 2024. The Court held that this transitional pathway was time-limited and could not be revived by equity, legal certainty, or IT-related difficulties. Outside the window, only accredited EPLC certificates (Rule 2) or legal diplomas (Rule 11) confer eligibility. Arguments analogising to re-establishment under Rule 320 RoP were also dismissed. The ruling confirms that transitional access to the UPC list closed definitively and will not be reopened under equitable considerations or procedural leniency.
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Mannheim Local Division (UPC_CFI_359/2023, Decision of 18 July 2025) – UPC Jurisdiction over UK Infringement Confirmed Post-BSH
The Mannheim Local Division applied the CJEU’s guidance in BSH Hausgeräte to confirm jurisdiction over UK-territorial infringement of EP 3 476 616. The defendant, Kodak, is EU-domiciled, and the court found that Art. 71b Brussels Ia – interpreted in light of BSH – permits the UPC to adjudicate UK acts on an inter partes basis. However, the court reiterated that it lacks power to issue erga omnes UK validity rulings or amend the UK register. Kodak’s defensive invalidity plea succeeded, with the court finding the UK claims obvious in light of previously submitted prior art. FUJIFILM’s auxiliary requests failed for lack of clarity and procedural compliance. The ruling underscores that while the UPC can assess UK infringement and validity defensively, formal relief affecting non-UPCA validations must remain territorially limited.
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Court of Appeal (UPC_CoA_405/2024, Decision of 19 June 2025) – High Threshold for Rehearing; Familiarity with EPO Case Law Expected
The Court of Appeal rejected Alexion’s application for rehearing under Art. 81(1)(b) UPCA, following dismissal of its prior appeal against a refusal of provisional measures. The Court found no “fundamental procedural defect”, reaffirming that this extraordinary remedy requires a defect so severe it undermines the legitimacy of the process. Disagreement with the Court’s claim interpretation or evidentiary assessment does not suffice. Importantly, the CoA confirmed that representatives before the UPC must be familiar with relevant EPO jurisprudence – especially decisions from the Boards of Appeal and the Enlarged Board. These, while not binding, form part of the applicable legal context and must be anticipated and addressed in party submissions. The decision reinforces the UPC’s expectations regarding representative competence and procedural awareness.
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Court of Appeal (UPC_CoA_221/2025, 222/2025, 223/2025, Order of 3 July 2025) – Strict Limits on Confidentiality Access Under Rule 262A
In a standard-essential patent (SEP) dispute between NST and Qualcomm, the Court of Appeal upheld the Munich Local Division’s decision to permit only one US-based attorney access to Qualcomm’s confidential documents. NST had requested access for multiple members of its US litigation team, arguing their deep involvement and technical expertise. The Court found that Rule 262A must be narrowly interpreted and that access must be strictly necessary. It declined to admit further US counsel, particularly as a technical expert with access was already in place and NST failed to identify specific, additional need. Qualcomm’s cross-appeal seeking to exclude even Mr. Stringfield was also rejected. The ruling highlights the UPC’s commitment to confidentiality protections, especially where documents may have strategic value in parallel US litigation.
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