1) Ein absolutes Verfahrenshindernis im Sinne der R. 362 VerfO ist ein Umstand, der die Durchführung oder Fortsetzung eines Verfahrens (vor dem Gericht) aus Rechtsgründen ausschließt, und zwar endgültig. Ein absolutes Verfahrenshindernis steht nicht zur Disposition der Parteien und kann auch nicht durch Nachreichung eines Schriftsatzes oder Nachholung beseitig oder geheilt werden. 2) Für die Bestimmung der Rechtskraft einer Entscheidung eines nationalen Gerichts ist das nationale Recht maßgeblich. 3) Ein substantiiertes („konkretes“, „specifically“, „spécifiquement“) Bestreiten gemäß R. 171.2 VerfO kann nicht verlangt werden, wenn es sich bei der vorgebrachten Tatsache um eine solche handelt, die außerhalb des Wahrnehmungs- und Verantwortungsbereichs der Partei liegt. Liegt die vorgebrachte Tatsache außerhalb des Wahrnehmungs- und Verantwortungsbereichs der Partei, ist es ihr möglich, sich mit Nichtwissen zu dieser Tatsache zu erklären. Die Tatsache gilt dann nicht als unstreitig, sie ist vielmehr beweisbedürftig. 4) Ist die Benutzung der technischen Lehre eines Patents aufgrund eines Vorbenutzungsrechts in einem Vertragsmitgliedstaat rechtmäßig, können die Handlungen in diesem Vertragsmitgliedstaat keine Begehungsgefahr hinsichtlich der Patentbenutzung in einem anderen Vertragsmitgliedstaat begründen. Die Begehungsgefahr erfordert die Feststellung einer rechtswidrigen Benutzung des Patents.

The Court of Appeal settled how a final national revocation judgment binds the Court. The res judicata of such a judgment is an absolute procedural bar under R. 362 RoP, the word absolute qualifying the bar rather than the effect of the judgment, and the bar leaves the Court no discretion to continue. Which effects that judgment has is determined by the national law of the state in which it was given, reached through the recognition rule of Brussels Ia and, in the alternative, through Art. 24(1)(e) UPCA. Applying German law, each ground in Art. 138(1) EPC is a separate cause of action and the grounds collected in Art. 138(1)(a) EPC form one, so the counterclaim was barred as to lack of patentability and admissible as to insufficiency. The Court also held that a party may declare ignorance of a fact lying outside its own sphere of perception and responsibility, so that R. 171.2 RoP does not deem the fact admitted but leaves it to be proved, and that lawful use under a prior-use right in one contracting member state can never found a threat of infringement in another, because a threat presupposes unlawful use.

The Düsseldorf Local Division revoked the granted claims of a media-sharing patent for lack of novelty, upheld it in the wording of the tenth auxiliary request examined and found indirect infringement of that amended claim by a streaming service. The order on information and accounting is the substantial part: the right under Art. 67 UPCA with Art. 68(3)(a) and (b) UPCA and R. 191 RoP covers supporting documents and, at the Court's discretion, confirmation by a sworn auditor or an affidavit, for which no express legal basis in the UPCA or the Rules is needed because it is a matter of evidence. Since the Court of Appeal has held that there is no implicit limitation on the use of information obtained under Art. 67 UPCA, a use limitation was written into the operative part, and access was restricted to outside counsel and two named representatives by a separate confidentiality order under R. 262A RoP, which applies at least mutatis mutandis to information a party must disclose under a decision rather than information in its own pleadings. Enforcement security was refused because the defendants put forward nothing to justify it and did not answer the claimant's evidence of solvency, and the interim award of damages was dismissed as unjustified.

1. A device claim defined by structural features is not, as a rule, limited to the device performing a specific function. For the purposes of assessing the novelty of such a claim, this means that if the prior art discloses a device which fulfils all the structural features of the claim and is at the same time suitable for the purpose specified in the claim, the claim lacks novelty, even if not all the technical effects of the claimed device described in the patent at issue but not claimed are realised in the same way in the prior art. 2. There is no obvious typographical error in the prior art if, from the perspective of a person skilled in the art, it does not seem far-fetched that a particular term is in fact intended in the sense in which it is worded, and it is not immediately apparent to the person skilled in the art that there is a typographical error and that something other than what is stated is intended.

The Munich Central Division partially revoked a unitary patent in a standalone revocation action, holding claim 1 as granted anticipated by Art. 54(3) EPC prior art and maintaining the patent in the form of the first auxiliary request. Its first headnote states the governing rule for device claims: a claim defined exclusively by structural features is as a rule not limited to the device performing a particular function, so novelty falls where the prior art discloses all structural features in a device that is also suitable for the purpose recited in the claim — even if the unclaimed technical effects described in the patent are not achieved in the same way. The second headnote sets a demanding threshold for reading an obvious clerical error into a prior-art document: none exists where it does not appear far-fetched to the skilled person that the term is meant as written and the error is not immediately apparent. Applying the settled rule that dimensions are generally not directly and unambiguously derivable from schematic figures, the panel held the conicity range of the auxiliary request neither explicitly nor implicitly disclosed, and rejected the inventive-step attacks for want of any pointer or motivation. Added matter, priority and clarity objections all failed, and costs were apportioned 70/30 to reflect the substantial degree of revocation.

ENGLISH: 1. Where an infringement action is filed in respect of acts occurring prior to the expiry of the patent and the possibility of claiming retroactive damages is at issue, the defendant has a legal interest in filing a counterclaim to revoke that patent, even if it has already expired. That legal interest arises from the infringement action brought by the claimant, since, under Article 47(6) of the UPCA, any person affected by a patent may bring an action in accordance with the Rules of Procedure. 2. The holder of a sub-domain is responsible for the content of the sub-domain as much as for the content of the main domain, either for offering or placing on the market the infringed products.

The Lisbon Local Division held that a defendant retains a legal interest in a counterclaim for revocation after the patent has expired, because the infringement action reaches acts before expiry and exposes it to retroactive damages (Art. 47(6) UPCA, Art. 65(4) UPCA). On the merits it found added matter in claim 1 as granted through an intermediate generalisation of the symmetry feature, but held that auxiliary request 1 cured the defect and was clear under Art. 84 EPC and R. 50.2 RoP, and it then rejected every novelty and inventive-step attack, holding in particular that a document from the antenna art is not a realistic starting point for an inductor on a semiconductor die. On infringement it applied the Court of Appeal's autonomous reading of "offer" in Belkin v Philips and held that the holder of a domain and its national sub-domains answers for the content of the sub-domains as it does for the main domain, expressly refusing to transpose the Court of Appeal's stricter rule on the personal liability of directors to an undertaking. It declared liability in damages, ordered a full Art. 67 UPCA account within ten weeks under penalty, and refused to suspend the decision pending appeal.

GERMAN: - 1. Das Rechtsschutzinteresse ist von Amts wegen zu prüfen. - 2. Eine Klage auf Nichtigerklärung des Patents ist im Falle des Erlöschens des Patents aufgrund von Zeitablauf nicht notwendigerweise unzulässig. Dies gilt insbesondere dann, wenn nach Ablauf der Schutzdauer eines Patents Ansprüche wegen Patentverletzung für den Zeitraum geltend gemacht werden, in dem das Patent noch in Kraft war. - 3. Das Gericht ist nicht an die im Patent genannte objektive Aufgabe gebunden, sondern kann diese selbst auf der Grundlage der Beschreibung und der Zeichnungen in ihrer Gesamtheit im Kontext der allgemeinen technischen Lehre des Patents ermitteln. - 4. Bei der Prüfung der Hilfsanträge ist das Gericht an die vom Kläger vorgebrachten Argumente bezüglich ihrer Patentfähigkeit gebunden und berücksichtigt nur diese. Die im Hauptantrag in Bezug auf die erteilte Fassung genannten Gründe werden bei der Prüfung der Hilfsanträge daher nur dann berücksichtigt, wenn sich der Kläger darauf beruft.

The Paris Central Division revoked EP 1 516 720 as granted for lack of inventive step over prior art WO 98/01279 (D19), but maintained the patent in the amended form of Auxiliary Request 1. The Division confirmed ex officio that a revocation action is admissible even where the patent has expired by lapse of time, provided the patentee may still assert infringement damages for the period of in-force protection — a point the Division addressed sua sponte even though defendant did not challenge standing. On substantive patent law, the Division applied the Court of Appeal's Meril v Edwards / Nanostring v 10x inventive-step framework and held that the court is not bound by the problem stated in the patent but may derive the objective technical problem independently from description and drawings. In examining auxiliary requests, the Division held it is bound to the patentability grounds raised by the claimant specifically against the auxiliary request — objections raised only against the granted version do not automatically carry over.

ENGLISH: In proceedings on the merits of infringement against several defendants, one of whom is domiciled in Spain and is sued for infringement of the Spanish portion of the same patent, the risk of irreconcilable judgements pursuant to Art. 8 of the European Regulation (EU) no. 1215/2012, as interpreted by the Court of Justice, exists if the Court verifies that: i) it is the same factual situation (i.e. parallel patent rights infringed in an identical manner: being part, as are the other defendants, of the same infringement chain, acting as a distributor of products manufactured by the other defendants; joint and several liability for damages); (ii) it is the same legal situation (in the case of Spain, implementation of the substantive rules set out in the Enforcement Directive); (iii) Spanish defendant reasonably would have been expected to be sued before the court of another Member State, such as the UPC (predictability); (iv) it is not an abusive summoning of the Spanish defendant before the Court of another Member State.

In the first UPC merits decision to tackle Art. 8(1) Brussels I Recast against a Spanish (non-UPC) defendant, the Milan Local Division established a four-factor framework for irreconcilable-judgments jurisdiction over a non-UPC-domiciled EU defendant sued alongside UPC-domiciled defendants: (i) same factual situation, (ii) same legal situation (satisfied where the relevant national law implements the Enforcement Directive and tracks Arts. 25–26 UPCA), (iii) predictability for the defendant, and (iv) no abuse of forum. The Division declined to await the CJEU referral (UPC_CoA_789/2025–813/2025) because that referral concerns provisional measures, not merits. Applying this framework to Motocard Bike, the Division asserted jurisdiction over its Spanish conduct but — because of the parallel Spanish nullity action and the exclusive-jurisdiction rule of Art. 24(4) Brussels I Recast (including the BSH/Electrolux (C-339/22) considerations) — separated the Spanish-territory infringement limb and stayed it until the Spanish validity ruling is final. On the merits, the Division confirmed EP 4 072 364 as maintained by the EPO Opposition Division (main-request claim = granted claims 1 + 5 + 7) applying the Amgen/Sanofi (UPC_CoA_528/2024) and Meril/Edwards (UPC_CoA_464/2024) inventive-step framework; in particular, D11 (fabric air-mattress art) was held to be in a non-relevant technical field under Nanostring/10x, so the D1 + D11 combination required hindsight. But the Division dismissed the infringement action: the 'second region' of claim 1 must be non-negligible and must permit real ventilation, so minimal manufacturing-tolerance clearances (Aachen study: 7.5% of surface in Tech-Air 3/10) do not qualify, and Alpinestars' single-bag airbag is not a hand/comb shape. Costs allocated so that each party bears its own (Art. 69(2) UPCA), reflecting Dainese's victory on validity but defeat on infringement.

ENGLISH: When assessing novelty, the Court will examine the disclosure of the prior art document overall and will compare this disclosure to the scope of the patent in suit. If one way of “mapping” leads to the assessment that a piece of prior art is novelty destroying, this leads to the result that the patent must be revoked.

Patent revoked in its entirety for lack of novelty. The Milan CD established a key novelty assessment principle: when comparing prior art to the patent scope, if any valid way of 'mapping' prior art elements to claim features results in novelty being destroyed, the patent must be revoked. Claim 1 and AR1 not novel over D2 (WO 2015/193833). AR3 et seq. rejected for lack of clarity (Art. 84 EPC). The court also clarified that there is no implicit request to maintain a patent based on dependent claims — the patentee must file a formal amendment application to restructure claims.

1. Purpose-related features in an apparatus claim regularly define the apparatus to the effect that it must be suitable for being used for the function and purpose stated in the patent claim. 2. If an apparatus claim contains a purpose-related feature, then for the assessment of novelty under Art. 54 EPC it is generally only relevant whether the prior art already discloses an apparatus that comprises all the structural features required by the patent. This is different only if the apparatus disclosed in the prior art is unsuitable for the intended use of the patent, or if it would first need to be modified in order to be used for that purpose. 3. If the patent proprietor defends the patent (on an auxiliary basis) for the event that the granted version of the patent does not stand even in part, and only in the version according to the auxiliary requests, there is, in accordance with Article 76(1) UPCA, no need to examine whether the claims of the patent in the granted version are to be declared invalid only in part pursuant to Article 65(3) UPCA. 4. If the patent contains several independent claims, an auxiliary request for defence of the patent by means of a closed set of claims means that the patent can only be maintained based on an auxiliary request in which each of the independent claims of the patent is contained in a valid version. 5. An amendment to the patent must meet the requirements of Art. 84 EPC. It must therefore be reviewed whether the amendment introduces a lack of clarity. 6. The lawful purchaser of a product placed on the market by the patent proprietor is, inter alia, entitled to use that product for its intended purpose. To that extent, exhaustion has occurred pursuant to Article 29 UPCA. The intended use also includes the customary maintenance and restoration of usability where the functionality or performance of the specific product has been impaired or lost, in whole or in part, due to wear, damage or other reasons. However, the intended use does not include any measures that result in the reproduction of a product covered by the patent. The proprietor’s exclusive right to manufacture is not exhausted by the first placing on the market of an individual embodiment of the patented product. 7. If part of a patented product is replaced, the decisive factor in determining whether this constitutes use in accordance with the intended purpose or a new product is whether the replacement preserves the identity of the specific patented product placed on the market or whether it creates a new product that is in accordance with the invention. This is assessed on the basis of a balancing of the interests worthy of protection of the patent proprietor in the economic exploitation of the invention on the one hand and of the purchaser in the unimpeded use of the specific product according to the invention placed on the market on the other, taking into account the unique character of the product protected by the patent. 8. If the replacement of the part in question is normally to be expected during the lifetime of the product, and if the purchasers therefore may legitimately expect to be able to continue to use or make repeated use of the acquired product by means of the replacement part, this will as a rule be regarded as a permissible use of the patented product placed on the market. The situation is, however, exceptionally different where the technical effects of the invention are reflected precisely in the part that is replaced. 9. If a contested embodiment that indirectly infringes the patent pursuant to Art. 26 UPCA can also be used without patent protection, only a limited prohibition is justified, which ensures that, on the one hand, commercial transactions involving the contested object outside the scope of the property right remain unaffected and, on the other hand, the direct infringement of the patent by the purchaser is excluded with sufficient certainty. Warning notices and/or contractual cease-and-desist agreements are generally considered suitable measures for this purpose. 10. Art. 64 UPCA does not apply to indirect patent infringement pursuant to Art. 26 UPCA. Consequently, in particular, no finding of patent infringement can be made.

The Munich Local Division (Panel 2) decided an infringement action and the revocation counterclaim together and produced ten headnotes on claim construction, exhaustion and the remedies available for indirect infringement. On construction it held that a purpose statement in an apparatus claim defines only the suitability of the claimed device, so novelty under Art. 54 EPC turns on whether the prior art discloses all spatial-physical features of that device, irrespective of the disclosed purpose; on that reading granted claims 1 and 4 were anticipated and the patent survives only in the form of auxiliary request 16. The Court developed an autonomous UPC standard for exhaustion under Art. 29 UPCA, distinguishing permissible repair from impermissible re-making by whether the replacement preserves the identity of the product put on the market, and rejected the defence because the proprietor's own cartridge does not practise the amended claim. For indirect infringement under Art. 26 UPCA it held that a means capable of non-infringing use justifies only a limited injunction secured by warning notices, refused a contractual-penalty undertaking as economically equivalent to an unqualified ban, and held that Art. 64 UPCA does not apply to indirect infringement at all, so no positive declaration of infringement and no recall or destruction may be ordered. Information and accounting under Art. 67 and Art. 68(3)(a),(b) UPCA with R. 191 RoP were granted with an auditor reservation and document production, together with a declaration of liability in damages.

The Paris Central Division partially upheld a patent in amended form and rejected the revocation action. The decision deals with claim interpretation as well as the different validity attacks.

While terms used in patent documents should be given their normal meaning in the relevant art, the description and the drawings, when considered in the context of document’s contents and not in isolation, may give these terms a different meaning (in the case at hand, the Court affirmed, applying this principle, that according to the ordinary meaning of the wording in common language, as well as in the context of the description and drawings of the patent, the term “a working surface” was to be interpreted as meaning “one working surface”).

The Nordic Baltic Regional Division issued this 78 pages-long decision (with an additional 70 pages of annexes) finding partially upholding the patent and finding for infringement. The Court dealt in detail with the issue of validity and found that some claims as granted included added subject matter and were not sufficiently disclosed; however, the Court allowed the auxiliary requests and accepted one of them to be sufficient. The Court then found for infringement, ordering an injunction, the provision of information and the payment of provisional damages.

The Paris Central Division upheld the patent in suit based on a combination of claims and revoked the patent otherwise based on a lack of inventive step which could not be overcome by the auxiliary requests.

Defendant's alternative request to maintain the patent at suit with respect to one or more of its dependent claims is a sufficiently clear request, even if it does not specify a particular claim, and, as such, imposes on the Court the obligation to rule on the matter and decide which claims, if any, remain valid.

The Paris Central Division revoked a patent, stating that the patent extended beyond the EP application as filed and the parent application. In the decision, the Court disregarded late filed documents, emphasizing the front-loaded proceedings before the UPC.

The Paris Central division revoked a patent in it's entirety. The defendant’s request for partial revocation of the patent was deemed admissible in principle under Article 65(3) UPCA, but it lacked clarity and justification. Furthermore, the proposed conditional amendments were considered unreasonable in number, violating procedural rules. The court further stated that in revocation actions, claimants must specify grounds of invalidity and supporting prior art at the outset and cannot introduce new grounds or documents later unless they support previously contested facts.

1. The Unified Patent Court legal provisions introduce the so-called ‘front loaded’ procedural system whereby a claimant is required to concretely elaborate his arguments and evidence in its first written pleading. However, these provisions must be interpreted in the light of the principle of proportionality, which requires that the parties should not be burdened with tasks that are unnecessary to achieve the stated objective, and in the light of the principle of procedural efficiency, which is contrary to excessive and overly detailed allegations of facts and production of multiple documents in relation to matters that can be presumed to be known to the opposing party and not to be disputed by them. 2. In revocation actions, the claimant is required to specify in detail the grounds of invalidity that allegedly affect the contested patent, as well as the prior art documents relied upon to support any allegation of lack of novelty or inventive step. Consequently, the claimant cannot introduce new grounds of invalidity of the attacked patent or introduce new documents considered novelty destroying or convincing starting points for the assessment of lack of inventive step in subsequent written acts. 3. In certain situation, following the defence raised by the defendant, the claimant may allege new facts and new evidence, insofar as they are considered capable of supporting the main facts already timely alleged and disputed by the defendant or the probative value of the evidence already filed. 4. While it is in general questionable that a particular published patent application or a patent specification can be considered as an indication of common general knowledge, however the statement of the author of the patent that a teaching is widely spread at the time can used as evidence of the fact that this teaching forms part of common general knowledge.

The Paris Central Division granted the revocation action in this case and revoked the patent for a list of territories. The court dealt with the sequence of submissions in a revocation action and whether documents filed late into the proceedings were to be admitted.

1. Independent of an application to amend the patent as may be filed by the patent proprietor (R 50 (2) RoP) the Court, according to Art. 65 (3) UPCA, limits the patent by a corresponding amendment of the claims and revokes it (only) in part 2. According to the dispositive principle (procedural maxim) a dispute before the Court generally is controlled by the parties; Art. 76 (1) UPCA rules that the Court shall decide in accordance with the requests submitted by the parties. By the sequence of its requests a patent owner as Defendant to a revocation action may indicate that it requests the Court to consider its application(s) to amend the patent prior to the evaluation, if the patent as granted shall be revoked in part and limited by a corresponding amendment of the claims. 3. Art. 65.3 UPCA only pertains to the granted patent. Art. 65.3 UPCA contains no obligation to the Court to evaluate, if an application to amend the patent filed by the patent owner can be allowed in part. Within an application to amend the patent a certain claim set is either allowable (as such; the complete claim set proposed) or not. 4. The claim interpretation to be performed by the court is a question of law for the Court. The Court performs it at any stage of the proceedings.

This order by the Milan Local Division (only available in italian) rejected an application for the amendment of a patent under Rule 30 RoP.

1. The request to amend the patent which concerns both claims challenged by the revocation action and claims not challenged by it is inadmissible (only) with regard to these latter claims. 2. In a situation in which the patent is not entirely attacked, the patent proprietor is entitled to propose amendments to the challenged claims also by inserting features, omitted in the original claims, mentioned in the non-attacked claims. 3. Grounds for revocation that could have been included in the initial statement to revocation are inadmissible if they do not relate to the content of the defence raised by the opposing party or to the application to amend the patent and, therefore, do not constitute a legitimate response to them.

The Paris Central Division (Seat) dismissed BITZER's revocation action against Carrier's cold-chain monitoring patent EP 3 414 708 and maintained the patent in the form of Auxiliary Request II. Main-request claim 1 was held to lack novelty over WO 2016/140969 (MB2), but AR II — requiring a dedicated power source per environmental sensor — was novel over MB2 and MB4 and involved an inventive step over MB5/MB6 because the prior art gave no motivation to adjust the transmission sampling rate based on environmental or user-induced events. The Court issued three important procedural rulings: (i) an application to amend covering both attacked and non-attacked claims is admissible only as regards the attacked claims, but the proprietor may still import features from non-attacked dependent claims into the attacked claim; (ii) grounds for revocation that could have been raised in the Statement of Revocation are inadmissible when filed in the Reply if they do not genuinely respond to the defence or to the application to amend; and (iii) in the UPC's adversarial system, parties must substantiate their invalidity attacks — the judge will not supplement insufficient argument ex officio.

Three parallel decisions - patent was upheld in amended form