Tilman Pfrang, LL.M. | 3rd June 2025
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 The infringement claim concerning Poland failed for lack of factual substantiation, and the patent was revoked in all designated UPCA states.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.