2026-07-16 - CoA - Emboline v. Aorticlab - UPC-COA-0000040/2026

1) Limiting a counterclaim for revocation by making it conditional upon a finding of infringement is permissible. 2) There is a need for clarification on such a conditional counterclaim if and when the infringement claimant appeals from a finding of non-infringement by the Court of First Instance. 3) In the event of an appeal by the infringement claimant, the counterclaimant may appeal against the Court of First Instance’s decision not to decide on the counterclaim for revocation. Even though upon a finding of non-infringement a decision not to decide on the counterclaim is in accordance with the counterclaimant’s request, the (conditional) counterclaimant must nevertheless be considered to have a legitimate interest in an appeal since, if the Court of Appeal were to overturn the Court of First Instance's decision and finds an infringement, the condition would be fulfilled and the decision of the Court of First Instance holding that the condition was not fulfilled must be set aside. 4) The counterclaimant may lodge an appeal pursuant to R. 220.1(a) RoP under the condition that the infringement claimant lodges an appeal against the decision in the infringeent action. Once an appeal in the infringement action is lodged, the applicable (regular) appeal fee must be paid. If no appeal against the decision in the infringement action is lodged, the condition under which the appeal in the counterclaim for revocation action was lodged is not fulfilled, the appeal is considered to be not lodged and no appeal fees shall be due. 5) On appeal, the counterclaim for revocation remains conditional, unless the counterclaimant would request to remove the condition and pursue its claim unconditionally. Such a request will then be subject to leave to change claim pursuant to R. 263 RoP by analogy, and R. 222.2 RoP. 6) If the condition to which the counterclaim for revocation action is subjected is fulfilled due to a finding of infringement by the Court of Appeal, the Court of Appeal shall as a rule not refer the counterclaim back to the Court of First Instance, but shall decide on it, in accordance with Art. 75(1) UPCA and R. 242.2(b) RoP, last sentence.

In a clarification order without disposition, the Court of Appeal established the procedural regime for a counterclaim for revocation that the counterclaimant has made conditional upon a finding of infringement. The Court held such a limitation permissible: although R. 263.3 RoP is not directly applicable — it addresses limitation of the claims, not of the entire action — the balance of interests is the same, so the rule applies by analogy and an unconditional request to make the counterclaim conditional must be granted [5]. Where the infringement claimant appeals a finding of non-infringement, the conditional counterclaimant has a legitimate interest in appealing the decision not to decide its counterclaim, even though that decision matched its own request, because a reversal on infringement would fulfil the condition [7]. The counterclaimant may lodge its appeal under R. 220.1(a) RoP conditionally upon the claimant's appeal, with the regular appeal fee falling due only once that condition is met and the appeal treated as not lodged (no fee) if the claimant does not appeal within the R. 224 RoP period [8]. The counterclaim remains conditional on appeal unless leave to remove the condition is sought under R. 263 RoP by analogy and R. 222.2 RoP [9], and if the Court of Appeal finds infringement it shall as a rule decide the counterclaim itself rather than refer it back, per Art. 75(1) UPCA and the last sentence of R. 242.2(b) RoP [10].