2026-08-19 - CD Milan - LS 9 v. Bellissa Haas - UPC_CFI_860/2025

1. The subject-matter of an action for revocation before the Unified Patent Court is determined not only by the grounds for revocation invoked within the meaning of Article 138(1) EPC, but also by the prior-art documents and arguments relied upon in support of the revocation. 2. The concept of being concerned by a patent, as laid down in Article 47(6) UPCA for revocation actions, is to be interpreted broadly. A distinction must be drawn between private and commercial acts, as Article 27(a) UPCA makes clear. Since legal persons cannot act “privately”, their acts must always be classified as commercial. As a general rule, legal persons are always to be regarded as being “concerned” within the meaning of Article 47(6) UPCA. They have, as a matter of principle, an interest in ensuring that patents which should not have been granted because a ground for revocation exists are not maintained. This applies irrespective of whether they are already active in a relevant industry.

In a headnoted decision the Milan Central Division decided a standalone revocation action brought by a company whose business is seminars and publications, coordinated with the defendant of a parallel infringement action. It held that the subject-matter of a UPC revocation action is determined not only by the grounds of revocation invoked but also by the prior art and arguments relied on, so that a revocation action resting on different prior art is not lis pendens with a pending appeal on a revocation counterclaim over the same patent. It then held that the requirement in Art. 47(6) UPCA that a revocation claimant be concerned by the patent is not displaced by Art. 65(1) UPCA and is to be read broadly: since legal persons cannot act privately, their acts are always commercial and they are as a general rule always concerned, whether or not they are active in the relevant industry. The straw-man objection failed on the facts and the question whether the UPCA prohibits straw-man actions at all was left open, as was a request for a default decision, the claimant's lawyer holding 40% of its shares not being barred from representing it. On the merits the claim as granted was anticipated by a 1958 US patent because a suitability feature in a device claim requires only that the prior device be suitable, while the attacks on the first auxiliary request failed both because they rested on prior art introduced only with the reply and, on substance, for want of substantiation.