Tilman Pfrang, LL.M. | 1st July 2025
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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