UPC commentary
The Agreement on a Unified Patent Court (UPC Agreement) provides the legal foundation for the functioning of the Unified Patent Court across Europe. It defines the structure, jurisdiction, and core procedural principles of the UPC.
In this section, our legal experts offer article-by-article commentary on the UPC Agreement. Each provision is explained with practical insights, legal context, and guidance to help.
THE CONTRACTING MEMBER STATES,
CONSIDERING that cooperation amongst the Member States of the European Union in the field of patents contributes significantly to the integration process in Europe, in particular to the establishment of an internal market within the European Union characterised by the free movement of goods and services and the creation of a system ensuring that competition in the internal market is not distorted;
CONSIDERING that the fragmented market for patents and the significant variations between national court systems are detrimental for innovation, in particular for small and medium-sized enterprises which have difficulties to enforce their patents and to defend themselves against unfounded claims and claims relating to patents which should be revoked;
CONSIDERING that the European Patent Convention (‘EPC’) which has been ratified by all Member States of the European Union provides for a single procedure for granting European patents by the European Patent Office;
CONSIDERING that by virtue of Regulation (EU) No 1257/2012(1), patent proprietors can request unitary effect of their European patents so as to obtain unitary patent protection in the Member States of the European Union participating in the enhanced cooperation;
WISHING to improve the enforcement of patents and the defence against unfounded claims and patents which should be revoked and to enhance legal certainty by setting up a Unified Patent Court for litigation relating to the infringement and validity of patents;
CONSIDERING that the Unified Patent Court should be devised to ensure expeditious and high quality decisions, striking a fair balance between the interests of right holders and other parties and taking into account the need for proportionality and flexibility;
CONSIDERING that the Unified Patent Court should be a court common to the Contracting Member States and thus part of their judicial system, with exclusive competence in respect of European patents with unitary effect and European patents granted under the provisions of the EPC;
CONSIDERING that the Court of Justice of the European Union is to ensure the uniformity of the Union legal order and the primacy of European Union law;
RECALLING the obligations of the Contracting Member States under the Treaty on European Union (TEU) and the Treaty on the Functioning of the European Union (TFEU), including the obligation of sincere cooperation as set out in Article 4(3) TEU and the obligation to ensure through the Unified Patent Court the full application of, and respect for, Union law in their respective territories and the judicial protection of an individual's rights under that law;
CONSIDERING that, as any national court, the Unified Patent Court must respect and apply Union law and, in collaboration with the Court of Justice of the European Union as guardian of Union law, ensure its correct application and uniform interpretation; the Unified Patent Court must in particular cooperate with the Court of Justice of the European Union in properly interpreting Union law by relying on the latter's case law and by requesting preliminary rulings in accordance with Article 267 TFEU;
CONSIDERING that the Contracting Member States should, in line with the case law of the Court of Justice of the European Union on non-contractual liability, be liable for damages caused by infringements of Union law by the Unified Patent Court, including the failure to request preliminary rulings from the Court of Justice of the European Union;
CONSIDERING that infringements of Union law by the Unified Patent Court, including the failure to request preliminary rulings from the Court of Justice of the European Union, are directly attributable to the Contracting Member States and infringement proceedings can therefore be brought under Article 258, 259 and 260 TFEU against any Contracting Member State to ensure the respect of the primacy and proper application of Union law;
RECALLING the primacy of Union law, which includes the TEU, the TFEU, the Charter of Fundamental Rights of the European Union, the general principles of Union law as developed by the Court of Justice of the European Union, and in particular the right to an effective remedy before a tribunal and a fair and public hearing within a reasonable time by an independent and impartial tribunal, the case law of the Court of Justice of the European Union and secondary Union law;
CONSIDERING that this Agreement should be open to accession by any Member State of the European Union; Member States which have decided not to participate in the enhanced cooperation in the area of the creation of unitary patent protection may participate in this Agreement in respect of European patents granted for their respective territory;
CONSIDERING that this Agreement should enter into force on 1 January 2014 or on the first day of the fourth month after the 13th deposit, provided that the Contracting Member States that will have deposited their instruments of ratification or accession include the three States in which the highest number of European patents was in force in the year preceding the year in which the signature of the Agreement takes place, or on the first day of the fourth month after the date of entry into force of the amendments to Regulation (EU) No 1215/2012 (1) concerning its relationship with this Agreement, whichever is the latest,
HAVE AGREED AS FOLLOWS:
Footnote:
(1) Regulation (EU) No 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection (OJ L 361, 31.12.2012, p. 1) including any subsequent amendments.
A Unified Patent Court for the settlement of disputes relating to European patents and European patents with unitary effect is hereby established.
The Unified Patent Court shall be a court common to the Contracting Member States and thus subject to the same obligations under Union law as any national court of the Contracting Member States.
Article 1 creates a court common to the Contracting Member States and integrates it into their judicial systems. The UPC therefore applies and respects EU law in its entirety, including the CJEU’s preliminary-reference mechanism. The provision also signals the transfer of exclusive competence in patent matters listed in Article 32, subject to the transitional opt-out in Article 83.
For the purposes of this Agreement:
(a) ‘Court’ means the Unified Patent Court created by this Agreement.
(b) ‘Member State’ means a Member State of the European Union.
(c) ‘Contracting Member State’ means a Member State party to this Agreement.
(d) ‘EPC’ means the Convention on the Grant of European Patents of 5 October 1973, including any subsequent amendments.
(e) ‘European patent’ means a patent granted under the provisions of the EPC, which does not benefit from unitary effect by virtue of Regulation (EU) No 1257/2012.
(f) ‘European patent with unitary effect’ means a patent granted under the provisions of the EPC which benefits from unitary effect by virtue of Regulation (EU) No 1257/2012.
(g) ‘Patent’ means a European patent and/or a European patent with unitary effect.
(h) ‘Supplementary protection certificate’ means a supplementary protection certificate granted under Regulation (EC) No 469/2009 (1) or under Regulation (EC) No 1610/96 (2).
(i) ‘Statute’ means the Statute of the Court as set out in Annex I, which shall be an integral part of this Agreement.
(j) ‘Rules of Procedure’ means the Rules of Procedure of the Court, as established in accordance with Article 41.
Footnote
(1) Regulation (EC) No 469/2009 of the European Parliament and of the Council of 6 May 2009 concerning the supplementary protection certificate for medicinal products (OJ L 152, 16.6.2009, p. 1) including any subsequent amendments.
(2) Regulation (EC) No 1610/96 of the European Parliament and of the Council of 23 July 1996 concerning the creation of a supplementary certificate for plant protection products (OJ L 198, 8.8.1996, p. 30) including any subsequent amendments
Article 2 supplies authoritative meanings for terms such as “Court”, “Division”, “European patent” and “European patent with unitary effect”. These definitions are mirrored in Rule 4.1 RoP to ensure uniform interpretation across the Agreement and the Rules of Procedure. Whenever later provisions use a term defined in Art. 2, the reader must revert to this Article for the precise scope.
This Agreement shall apply to any:
(a) European patent with unitary effect;
(b) supplementary protection certificate issued for a product protected by a patent;
(c) European patent which has not yet lapsed at the date of entry into force of this Agreement or was granted after that date, without prejudice to Article 83; and
(d) European patent application which is pending at the date of entry into force of this Agreement or which is filed after that date, without prejudice to Article 83.
In UPC_CFI_359/2023 (Fujifilm Corporation vs. Kodak GmbH et al., decision of 2 April 2025), it was stated that there is no competence of the UPC for European patents and their national parts which have already lapsed before 1 June 2023. The UPC has no jurisdiction over a European patent with regard to those national parts of UPCA member states which have already lapsed before 1 June 2023 (=date of entry into force of the UPCA). The same applies to national parts of non-UPCA-member states. Without prejudice to Art. 83 UPCA, Art. 3 (c) UPCA vests upon the UPC jurisdiction over any pre-existing European patent which has not yet lapsed at the date of the UPCA’s entry into force, i.e., 1 June 2023. In this context, the term “any European patent” in Art. 3 (c) UPCA has to be construed as meaning “any national part thereof”. Accordingly, recital 3 to the UPCA sees the purpose of the EPC as providing for a single procedure for granting European patents. The UPCA further acknowledges said legal structure by harmonizing in part the substantive law of its member states applicable to then existing national parts for infringing acts committed after its entry into force (cf. Local Division Mannheim, decision of 11 March 2025, UPC_CFI_159 mn. 91 et seqq., UPC_CFI_162/2024 mn. 95 et seqq.). Art. 3 (c) UPCA cannot be interpreted so as to establish the UPC’s jurisdiction over national parts having lapsed before the UPCA’s entry into force provided that one single national part is still in force at that date.
The UPC enjoys its own legal personality, enabling it to enter contracts, own property, employ staff and appear as a party in administrative or labour disputes. Host-state agreements grant the Court, its judges and staff the necessary privileges and immunities for independent operation.
Footnote
(3) Regulation (EC) No 593/2008 of the European Parliament and of the Council of 17 June 2008 on the law applicable to contractual obligations (Rome I) (OJ L 177, 4.7.2008, p. 6) including any subsequent amendments.
(4) Regulation (EC) No 864/2007 of the European Parliament and of the Council of 11 July 2007 on the law applicable to non-contractual obligations (Rome II) (OJ L 199, 31.7.2007, p. 40) including any subsequent amendments.
State liability for breaches of EU law is a general principle set out in the CJEU case law, even if there are no provisions in the EU Treaty in this regard. Art. 5 UPCA determines the law applicable for liability claims against the UPC. Art. 22 UPCA relates to the joint and several State liability for damage caused by infringements of Union law.
In ECJ Joint Cases C-6/90 and 9/90 (Andrea Francovich et al. v. Italian Republic, judgement of 28 May 1991) the European Court of Justice stated that the full effectiveness of Community rules would be impaired and the protection of the rights which they grant would be weakened if individuals were unable to obtain reparation when their rights are infringed by a breach of Community law for which a Member State can be held responsible. Such a possibility of reparation by the Member State is particularly indispensable where the full effectiveness of Community rules is subject to prior action on the part of the State and where, consequently, in the absence of such action, individuals cannot enforce before the national courts the rights conferred upon them by Community law. It follows that the principle whereby a State must be liable for loss and damage caused to individuals by breaches of Community law for which the State can be held responsible is inherent in the system of the Treaty.
In ECJ C-224/01 (Gerhard Köbler v Republik Österreich, judgment of 30 September 2003) the European Court of Justice stated that the principle that Member States are obliged to make good damage caused to individuals by infringements of Community law for which they are responsible is also applicable where the alleged infringement stems from a decision of a court adjudicating at last instance where the rule of Community law infringed is intended to confer rights on individuals, the breach
A) is sufficiently serious and there
B) is a direct causal link between that breach and the loss or damage sustained by the injured parties.
In order to determine whether the infringement is sufficiently serious when the infringement at issue stems from such a decision, the competent national court, taking into account the specific nature of the judicial function, must determine whether that infringement is manifest
In ECJ C-542/14 (SIA VM Remonts v. Konkurences padome, judgement of 21 July 2016) the European Court of Judgement stated that that Article 101(1) TFEU must be interpreted as meaning that an undertaking may, in principle, be held liable for a concerted practice on account of the acts of an independent service provider supplying it with services only if one of the following conditions is met:
A) the service provider was in fact acting under the direction or control of the undertaking concerned, or
B) that undertaking was aware of the anti-competitive objectives pursued by its competitors and the service provider and intended to contribute to them by its own conduct, or
C) that undertaking could reasonably have foreseen the anti-competitive acts of its competitors and the service provider and was prepared to accept the risk which they entailed.
This ruling might be relevant for liability against the PMAC e.g. in FRAND cases.
PMAC Mediation and Arbitration is a contractual relationship between the parties and the Mediators / Arbitrators by Mediation / Arbitration Agreement (see Art. 1 Rules of Mediation RoM and Art. 1 and Art. 9 Rules of Arbitration RoA). Art. 29 RoM and Art. 54 RoA restrict liability to damage caused by intentional wrongdoing. The parties waive, to the fullest extent permitted under the applicable law, any claim against the Mediator / Arbitrators, the PMAC and any person appointed by the Tribunal based on any alleged act or omission in connection with the proceedings conducted under these Rules. Art. 29 extends the exclusion of liability for organs and employees of the PMAC.
The UPC handles sensitive information in the electronic files. UPC and PMAC are entitled to safeguard appropriate technical and organizational measures for data protection.
In CJEU Case C-340/21 (VB v. Natsionalna agentsia za prihodite, judgement of 14 December 2023), the Court of Justice of the European Union stated that Art. 24 and 32 GDPR (EC Regulation 2016/679) must be interpreted as meaning that unauthorised disclosure of personal data or unauthorised access to those data by a ‘third party’, within the meaning of Art. 4(10) GDPR, are not sufficient, in themselves, for it to be held that the technical and organisational measures implemented by the controller in question were not ‘appropriate’, within the meaning of Art. 24 and 32 GDPR. Recital 83 GDPR states, in its first sentence, that ‘in order to maintain security and to prevent processing in infringement of this Regulation, the controller or processor should evaluate the risks inherent in the processing and implement measures to mitigate those risks’, without claiming that it would be possible to eliminate the risks. Art. 82(3) GDPR must be interpreted as meaning that the controller cannot be exempt from its obligation to pay compensation for the damage suffered by a data subject, under Art. 82(1) and (2) GDPR, solely because that damage is a result of unauthorised disclosure of, or access to, personal data by a ‘third party’, within the meaning of Art. 4(10) GDPR, in which case that controller must then prove that it is in no way responsible for the event that gave rise to the damage concerned.
Article 6 establishes the institutional triad that forms the Unified Patent Court: the Court of First Instance (with its central, local and regional divisions), the Court of Appeal seated in Luxembourg, and the Registry that serves both instances. The detailed composition and competence of the First Instance divisions are set out in Articles 7 and 33, while Articles 9 and 10 UPCA describe the Court of Appeal’s and Registry’s organisation and tasks.
The Court of First Instance has a central division, a local division and one regional division (the Nordic-Baltic division). The seat of the central division is Paris; branches are Munich and Milan (“London” has been replaced by Milan according to the decision of the Administrative Committee under Article 87 (2) UPCA amending the Agreement of 26 June 2023). Local Divisions operate in Member States that so request, while Regional Divisions may be shared by several States. Annex II (“London” has been replaced by Milan according to the decision of the Administrative Committee under Article 87 (2) UPCA amending the Agreement of 26 June 2023) lists the current divisions.
Article 8 guarantees that every panel is multinational and balanced: three judges as a rule, with at least one member from outside the host State. For smaller local divisions – those averaging fewer than 50 patent cases a year – the panel is one national judge plus two non-nationals drawn ad hoc from the Pool of Judges (paragraph 2). Busier local divisions flip the ratio: two national judges and one long-term non-national (paragraph 3). Regional divisions (i.e. the Nordic-Baltic division) likewise combine two judges from the participating States with one outsider (paragraph 4). A technically qualified judge from the Pool may be added on request of a party or the panel itself, but only once per case (paragraph 5). Central-division panels always include a technically qualified judge, except in standalone declarations of non-infringement where three legally qualified judges suffice (paragraph 6). Parties may, by mutual consent, opt for a single legally qualified judge, and every panel is chaired by a legally qualified member (paragraphs 7–8).
Article 9 fixes the Court of Appeal’s standard composition at five members: three legally qualified judges, each from a different Contracting Member State, plus two technically qualified judges drawn by the President of the Court of Appeal from the Pool to match the technology at issue (paragraph 1). Appeals that concern only decisions under Article 32(1)(i) – essentially points of law unconnected to technical merits – are heard by three legal judges without technical members (paragraph 2). Every panel is chaired by a legally qualified judge (paragraph 3). Panel formation and rotation follow the rules laid down in the Statute, allowing workload balancing and continuity (paragraph 4). The Court of Appeal’s seat is Luxembourg, giving it proximity to both the CJEU and EU institutions and reinforcing its Union-law orientation (paragraph 5).
As summarized by the Court of Appeal in UPC_CoA_22/2024, 28 May 2024, Carrier v BITZER Electronics, in a consistent line of case law, the Court of Appeal has ruled that an appeal may be adjudicated by a panel of three legally qualified judges if the subject matter of the appeal proceedings is of a non-technical nature only and there are no technical issues at stake (Court of Appeal 13 October 2023, UPC_CoA_320/2023, APL_572929/2023; Court of Appeal 18 December 2023, UPC_CoA_472/2023, App_594327/2023; Court of Appeal 19 December 2023, UPC_CoA_476/2023, App_594339/2023; Court of Appeal 20 December 2023, App_594342/2023; Court of Appeal 3 April 2024, UPC_CoA_433/2023, APL_588420/2023, UPC_CoA_435/2023, APL_588422/2023, UPC_CoA_436/2023, APL_588423/2023, UPC_CoA_437/2023, APL_588425/2023, and UPC_CoA_438/202, APL_588426/2023; Court of Appeal 10 January 2024, 8 February 2024 and 10 April 2024, UPC_CoA_404/2023, APL_584498/2023).
The Court shall appoint the Registrar in accordance with Article 22 of the Statute and lay down the rules governing the Registrar's service.
Article 10 installs a single Registry at the Luxembourg seat of the Court of Appeal, headed by the Registrar, and mandates that the electronic register it maintains is public save for entries shielded by confidentiality orders under Rule 262. Sub-registries in every division of the Court of First Instance receive local filings and immediately transmit an electronic copy to the central Registry, ensuring a single authoritative case record (paragraph 2–3).
Article 10 establishes the Registry as a central, non-judicial administrative body within the Unified Patent Court, distinct from the adjudicative functions of both the Court of First Instance and the Court of Appeal. The Registry is not a mere clerical appendage to the judiciary, but an independent judicial administration authority entrusted with ensuring the orderly, formal conduct of proceedings before the Court.
Paragraph 1 provides for a single Registry at the seat of the Court of Appeal. This institutional choice reflects the Registry’s role as a central support structure for the entire Court, including both instances. The Registrar performs the functions assigned by the Statute and the Rules of Procedure and acts under the legal supervision, but not the professional direction, of the President of the Court of Appeal. The Registry’s independence is underlined by the fact that judicial panels are not entitled to issue instructions to the Registrar in the performance of Registry tasks.
A core function of the Registry is its role as the formal gateway to the Court. All procedural submissions are received, recorded and processed by the Registry, which ensures compliance with formal requirements before a matter is placed before the competent judicial body. This includes the allocation of cases in accordance with the applicable allocation scheme and the service of submissions and decisions on the parties. Where formal deficiencies are identified, the Registry prepares the matter for a decision on inadmissibility by the competent judicial authority. In this respect, the Registry’s role goes beyond that of a traditional court office under many national procedural systems.
Paragraphs 2 and 3 reflect the decentralised structure of the Court of First Instance. Sub-registries are established at all first-instance divisions to provide local administrative support and to handle filings made at the divisional level. These sub-registries do not operate autonomously but act on behalf of the central Registry. Each filing is promptly notified to the Registry, ensuring that a single, authoritative electronic case record is maintained. This structure combines local accessibility with centralised oversight and consistency.
The public register maintained by the Registry is a key feature of Article 10. While the register is in principle public, its scope must be understood in a functional and purposive manner. The register serves to inform the public of the existence and outcome of proceedings, not to provide unrestricted access to the full procedural file. Access is generally limited to essential information such as the parties, the case number, the division seized, and final, enforceable decisions. Written pleadings, evidence and procedural measures taken during the course of proceedings are not, as a rule, part of the publicly accessible register and may be subject to confidentiality protections under the Rules of Procedure.
Paragraph 4 governs the appointment of the Registrar in accordance with the Statute. The Registrar is bound by the Agreement, the Statute and the Rules of Procedure, but enjoys functional independence in the execution of Registry duties. This institutional design safeguards both the efficiency of court administration and the independence of the judiciary.
An Administrative Committee, a Budget Committee and an Advisory Committee shall be set up in order to ensure the effective implementation and operation of this Agreement. They shall in particular exercise the duties foreseen by this Agreement and the Statute.
Article 11 provides for governance of the Court through three committees – the Administrative Committee, the Budget Committee and the Advisory Committee – tasked with ensuring the effective implementation and operation of the UPCA. Article 11 establishes a committee-based governance framework through which the Contracting Member States collectively support the Court's functioning. The Unified Patent Court is institutionally autonomous and not embedded in any national judicial administration. Consequently, States do not exercise influence through instructions or supervision, but solely via the committees created by the Agreement and the Statute.
These bodies are not instruments for shaping patent or judicial policy. The Court’s mandate, structure and procedures are exhaustively defined by the UPCA and the Statute and may be altered only through formal amendment mechanisms. The role of the committees is therefore limited to organisational, financial and preparatory tasks aimed at ensuring the Court’s effective and stable operation within the existing legal framework.
Article 12 defines the composition, voting structure and internal organisation of the Administrative Committee, which constitutes the Court’s primary governance body. Each Contracting Member State is represented by one delegate and holds one vote, reflecting the principle of sovereign equality irrespective of a State’s size or litigation activity. The European Commission participates as an observer, thereby ensuring alignment with Union law without exercising decision-making power.
The Administrative Committee is entrusted with far-reaching responsibilities essential to the Court’s institutional functioning. Its powers include, in particular, the appointment of judges, the adoption and amendment of the Statute within the limits set by the Agreement, and the enactment of key secondary instruments such as the Rules of Procedure and the Court’s financial framework. By contrast, the determination of the annual budget is expressly reserved for the Budget Committee.
Decisions are generally taken by a qualified majority of three quarters of the participating States. For matters of particular institutional sensitivity, notably judicial appointments, unanimity is required. The Committee organises its work autonomously through its own rules of procedure and elects a chair from among its members for a renewable three-year term.
Article 13 establishes the Budget Committee as the financial oversight body of the Court. As an autonomous international organisation with its own legal personality, the Court requires an organ responsible for supervising its finances and formally adopting the annual budget proposed by the Presidium.
Each Contracting Member State is represented and holds one vote, reflecting the fact that all States may ultimately bear financial responsibility if the Court’s revenue does not cover its expenditure. Decisions are generally taken by a simple majority. However, adoption of the budget requires a three-quarters majority, ensuring broad support for binding financial commitments. The Committee adopts its own rules of procedure and elects a chairperson for a renewable three-year term.
1. The Advisory Committee shall:
(a) assist the Administrative Committee in the preparation of the appointment of judges of the Court;
(b) make proposals to the Presidium referred to in Article 15 of the Statute on the guidelines for the training framework for judges referred to in Article 19; and
(c) deliver opinions to the Administrative Committee concerning the requirements for qualifications referred to in Article 48(2).
2. The Advisory Committee shall comprise patent judges and practitioners in patent law and patent litigation with the highest recognised competence. They shall be appointed, in accordance with the procedure laid down in the Statute, for a term of six years. That term shall be renewable. 20.6.2013 Official Journal of the European Union C 175/5 EN
3. The composition of the Advisory Committee shall ensure a broad range of relevant expertise and the representation of each of the Contracting Member States. The members of the Advisory Committee shall be completely independent in the performance of their duties and shall not be bound by any instructions.
4. The Advisory Committee shall adopt its rules of procedure.
5. The Advisory Committee shall elect a chairperson from among its members for a term of three years. That term shall be renewable.
Article 14 establishes the Advisory Committee as an expert body designed to integrate professional patent expertise into the institutional framework of the Court. Unlike the Administrative and Budget Committees, it is not composed of State representatives but of highly qualified patent judges and practitioners with recognised competence in patent law and litigation. Members are appointed for renewable six-year terms and must act in complete independence, free from instructions. The composition must ensure both broad technical and legal expertise and representation of all Contracting Member States.
The Committee’s most significant function concerns judicial appointments. It plays a decisive preparatory role by identifying and assessing suitable candidates, thereby structuring the Administrative Committee’s decision-making process. In addition, it proposes guidelines for judicial training to the Presidium and delivers opinions on professional qualification requirements under Article 48(2). While its role is formally advisory, its expertise is central to maintaining the Court’s professional quality and legitimacy.
1. Legally and technically qualified judges
The Court is composed of both legally qualified and technically qualified judges. This dual structure reflects the particular nature of patent litigation: disputes concerning complex technical subject matter must ultimately be decided by applying legal and normative criteria.
Legally qualified judges have a particular responsibility for the legal and procedural framework of the proceedings. The presidency of a panel is reserved to a legally qualified judge (Arts. 8.8 and 9.3 UPCA), and only a legally qualified judge may sit as a single judge at first instance (Art. 8.7 UPCA) or act as judge-rapporteur at first instance (R. 18 RoP).
Patent infringement and validity ultimately involve questions of law. Claim construction, novelty and inventive step require an understanding of the technical teaching, but must be assessed according to legal criteria. Legally qualified judges must therefore ensure that technical aspects are fully considered without becoming the sole standard for deciding the legal issues.
Technically qualified judges contribute the technical expertise necessary to understand the technical teaching at issue. Their role differs fundamentally from that of expert witnesses, party-appointed experts or court experts, whose statements constitute evidence to be assessed by the Court.
2. Role of technically qualified judges in the decision-making process
A technically qualified judge is a member of the panel and participates directly in the deliberations and decision-making. The particular significance of the technically qualified judge therefore lies not merely in providing technical information to the legally qualified judges.
Unlike an expert, the technically qualified judge can introduce technical considerations directly into the Court's internal deliberations, discuss them with the other members of the panel and participate in the final decision. Technical expertise is thus integrated into the judicial decision-making process itself.
Technically qualified judges cannot chair a panel or sit as single judges at first instance. Nor can they act as judge-rapporteur. Their institutional role is nevertheless distinct from that of any other technically qualified participant in the proceedings because they participate directly in the Court's deliberations and vote on the decision.
3. Competence and experience in patent litigation
Both legally and technically qualified judges must ensure the highest standards of competence and have proven experience in patent litigation (Art. 15.1 UPCA). These requirements go beyond the formal qualifications required for the respective category of judge.
The requirement of proven experience presupposes practical involvement in patent litigation, for example as a party representative or as a member or assistant of a court dealing with patent disputes. Mere academic observation or theoretical study of patent litigation is generally insufficient.
The UPCA does not prescribe a minimum number of cases. Relevant factors may include the number and type of patent disputes, the candidate's role and the depth of involvement. The decisive question is whether the candidate has sufficient experience to understand and assess the different types of patent disputes falling within the Court's competence, including disputes concerning patent validity.
4. Formal qualification of legally qualified judges
Under Art. 15.2 UPCA, legally qualified judges must possess the qualifications required for appointment to judicial office in a Contracting Member State. The relevant qualification is determined by the law of that State.
This formal requirement must be distinguished from Art. 15.1 UPCA. Formal eligibility for judicial office does not, by itself, establish the highest standards of competence and proven experience in patent litigation.
5. Additional qualifications of technically qualified judges
Under Art. 15.3 UPCA, technically qualified judges must have a university degree and proven expertise in a field of technology. The expertise may result from practical professional activities or scientific work in the relevant technical field.
They must also have proven knowledge of civil law and civil procedure relevant to patent litigation. Such knowledge need not necessarily have been acquired through practical legal work and may result from appropriate legal or patent-law training.
These requirements must be read together with Art. 15.1 UPCA. Technically qualified judges must additionally have proven experience in patent litigation. Theoretical knowledge of patent law and civil procedure therefore does not replace the separate requirement of practical litigation experience.
1. Two-stage appointment procedure
The appointment of judges follows a two-stage procedure involving the Advisory Committee and the Administrative Committee. The Advisory Committee first assesses the candidates and establishes a list of the candidates most suitable for appointment. The Administrative Committee subsequently appoints the judges from that list by common accord.
The procedure separates the professional assessment of candidates from the formal appointment decision. The Advisory Committee is composed of experts acting independently, whereas the Administrative Committee consists of representatives of the Contracting Member States.
2. Selection by the Advisory Committee
The Advisory Committee examines the applications and establishes a list of the candidates most suitable for appointment. Its function is not merely advisory in the sense of providing a non-binding recommendation. By determining the candidates included in the list, the Advisory Committee limits the group of persons eligible for appointment.
The assessment must be based on professional and objective criteria. The decisive consideration is the candidates' suitability in light of the requirements of Art. 15 UPCA, in particular the highest standards of competence and proven experience in patent litigation.
The list must contain at least twice as many candidates as there are vacancies. The Advisory Committee may also recommend that a candidate receive training before a decision on the application is taken.
3. Appointment by the Administrative Committee
The Administrative Committee appoints the judges on the basis of the list established by the Advisory Committee. Candidates not included in that list cannot be appointed.
The appointment must be made by common accord. The Administrative Committee is therefore responsible for the final selection but cannot replace the professional assessment conducted by the Advisory Committee by selecting candidates outside the list.
Unlike the Advisory Committee, the Administrative Committee may also take account of the need for a balanced composition of the Court on the broadest possible geographical basis. Such considerations operate only within the group of candidates previously identified as suitable by the Advisory Committee.
4. Implementing provisions under the Statute
The detailed appointment procedure is governed by Arts. 2 to 10 of the Statute.
Candidates must have a good command of at least one official language of the European Patent Office. Judicial vacancies must be publicly advertised. The Administrative Committee determines the number of judges required for the proper functioning of the Court.
Judges are appointed for a term of six years and may be reappointed. The UPCA and the Statute do not provide for appointment for life or prescribe a maximum age for judicial office.
A judge's term ends upon expiry of the term of office, death or resignation. A judge may also be removed from office where the requirements for judicial office or the obligations arising from that office are no longer fulfilled. The existence of such grounds is determined by the Presidium after the judge has been heard; the Administrative Committee is informed of that decision.
1. Independence as a principle of judicial office
Art. 17.1 UPCA guarantees the independence of the Court, its judges and the Registrar. Judges are not bound by instructions when performing their judicial duties.
The guarantee protects independent judicial decision-making against direct and indirect influence. Judges must be free to decide and reason cases solely on the basis of their own assessment of the applicable law and the facts of the case. Judicial independence is not a privilege of the individual judge but a safeguard for the proper administration of justice and the parties' right to an independent tribunal.
The guarantee must be understood in light of Art. 47(2) of the Charter of Fundamental Rights of the European Union. It is further supported by the immunity provided for in Art. 8 of the Statute for acts performed by judges in their official capacity.
2. Safeguarding independence through professional incompatibility
Art. 17.2 UPCA generally prohibits legally qualified judges and full-time technically qualified judges from engaging in any other occupation, whether gainful or not.
The prohibition reduces the risk that external professional interests or obligations affect the exercise of judicial functions. It also ensures that full-time judges devote their professional capacity to the Court. The broad wording covers both paid and unpaid professional activities.
The Administrative Committee may permit exceptions. Since the prohibition is intended to safeguard judicial independence, the compatibility of the activity with the judicial office and its proper exercise should be decisive when considering an exception.
A specific exception is provided by Art. 17.3 UPCA for judicial functions at national level. Service as a UPC judge does not preclude continued service as a national judge. This allows the UPC in particular to draw on judges with practical experience in national patent litigation without requiring them to relinquish their national judicial office.
3. The particular position of part-time technically qualified judges
The UPC adopts a different model for part-time technically qualified judges. Under Art. 17.4 UPCA, they may continue to exercise other professional activities provided that no conflict of interest arises.
This exception is of considerable practical importance. The Court must have access to technical expertise covering a broad spectrum of technologies, although the caseload in individual technical fields may not justify appointing full-time judges for each field. Allowing technically qualified judges to remain professionally active broadens the pool of available technical expertise.
At the same time, continued professional activity creates a particular risk of conflicts of interest. A technically qualified judge may, for example, remain active as a patent attorney, consultant or employee and thereby have professional connections with parties or interests relevant to proceedings before the Court. Art. 17 does not address this risk by prohibiting external professional activity altogether. Instead, it relies on the identification and management of conflicts in the individual case.
4. Impartiality through case-specific conflict management
Where a conflict of interest exists, the judge concerned must not participate in the proceedings. The consequence is therefore primarily case-specific exclusion rather than a general incompatibility with judicial office.
Under Art. 7.3 of the Statute, a judge who becomes aware of a conflict of interest must inform the President of the Court concerned. The President may also draw a possible conflict to the judge's attention. The conflict is resolved by excluding the judge from the particular proceedings and, where necessary, assigning another judge from the Pool of Judges.
Art. 17 thus combines two different mechanisms for safeguarding independent and impartial decision-making. For full-time judges, independence is protected primarily by restricting other professional activities. Where continued external activity is permitted, in particular for part-time technically qualified judges, impartiality is safeguarded through case-specific conflict-of-interest rules.
1. The Pool of Judges as a mechanism for consistency and expertise
The decentralised structure of the Court creates a particular challenge: proceedings are heard by numerous local and regional divisions in different Contracting Member States, while the Court must nevertheless maintain a consistently high level of legal and technical expertise.
The Pool of Judges is one of the principal organisational mechanisms for achieving this objective. It enables judges to be assigned across divisions and thereby facilitates the exchange of experience and expertise within the Court. The pool also supports the multinational composition of first instance panels.
The pool thus serves two related functions: it allows the Court to allocate judicial resources flexibly and helps to ensure comparable quality and expertise across the different divisions.
2. Composition and availability of the pool
The Pool of Judges comprises all legally qualified and technically qualified judges of the Court of First Instance, whether serving full-time or part-time. Judges of the Court of Appeal do not form part of the pool.
At least one technically qualified judge with relevant qualifications and experience must be available for each field of technology. The pool must therefore collectively cover the broad spectrum of technical fields in which patent disputes may arise.
Technically qualified judges from the pool are also available to the Court of Appeal. Their expertise can thus be used at both levels of jurisdiction.
Membership of the pool means that a judge is not necessarily confined to the division with which the judge is primarily associated. In particular, legally qualified judges may be assigned to other local and regional divisions where the requirements for panel composition or the needs of the proceedings so require.
3. Case-specific allocation of judicial expertise
Judges are assigned from the pool by the President of the Court of First Instance where the UPCA or the Statute provides for such assignment.
The allocation is case-specific and must take account of the judge's legal or technical expertise, language skills and relevant experience. The nature of the dispute, the language of the proceedings and, in particular, the relevant field of technology may therefore determine which judge is assigned.
The purpose is not merely to fill a vacant position on a panel. Art. 18.3 UPCA expressly requires assignments to ensure that all panels of the Court of First Instance operate with the same high quality and possess an equally high level of legal and technical expertise.
The assignment of judges from the pool is therefore an instrument for matching the particular requirements of a case with the expertise available within the Court.
4. Flexible allocation and continuity
The Pool of Judges also enables the Court to respond to differences in workload between divisions. Judges may be assigned where additional judicial capacity or particular expertise is required.
For divisions with a high caseload, longer-term assignments of legally qualified judges may be appropriate under Art. 8.3 UPCA. Such assignments can promote continuity and efficient case management while preserving the multinational composition required by the UPCA.
Although the UPCA does not contain a corresponding express rule for longer-term assignments of technically qualified judges, repeated assignment of judges with relevant technical or linguistic expertise may likewise contribute to efficient proceedings.
Art. 18 thus combines flexible case-specific allocation with the possibility of institutional continuity. The Pool of Judges is not merely a reserve of additional judges but a central mechanism for distributing legal, technical and linguistic expertise throughout the Court.
1. A training framework for judges, the details of which are set out in the Statute, shall be set up in order to improve and increase available patent litigation expertise and to ensure a broad geographic distribution of such specific knowledge and experience. The facilities for that framework shall be situated in Budapest.
2. The training framework shall in particular focus on:
(a) internships in national patent courts or divisions of the Court of First Instance hearing a substantial number of patent litigation cases; C 175/6 Official Journal of the European Union 20.6.2013 EN
(b) improvement of linguistic skills;
(c) technical aspects of patent law;
(d) the dissemination of knowledge and experience in civil procedure for technically qualified judges;
(e) the preparation of candidate-judges.
3. The training framework shall provide for continuous training. Regular meetings shall be organised between all judges of the Court in order to discuss developments in patent law and to ensure the consistency of the Court's case law.
Art. 19 UPCA establishes a permanent training framework for UPC judges. Its purpose is not limited to the initial preparation of candidate judges. The framework is expressly intended to improve and increase patent litigation expertise, ensure a broad geographical distribution of such expertise and provide continuous judicial training.
The training framework reflects the particular structure of the UPC judiciary. The Court brings together legally qualified and technically qualified judges from different Contracting Member States and, consequently, from different national procedural and patent litigation traditions. Art. 19.2 UPCA therefore expressly identifies internships at national patent courts and experienced divisions of the Court of First Instance, linguistic training, technical aspects of patent law and the dissemination of knowledge and experience in civil procedure for technically qualified judges as central elements of judicial training.
The facilities for the training framework are situated in Budapest. A training centre for European patent judges was formally opened there in 2014 in preparation for the UPC system.
Art. 19.3 UPCA places particular emphasis on continuous training and the consistency of the Court's case law. Regular meetings between all judges are to serve not only to discuss developments in patent law but expressly to ensure consistency in UPC jurisprudence. The provision thus recognises that consistency within a multinational court cannot be achieved solely through appellate review. Continuous exchange between judges and the dissemination of experience across divisions form an additional institutional mechanism for developing a coherent body of UPC case law.
This objective is particularly relevant in the early years of the Court, during which divisions have developed approaches to issues for which different national traditions previously existed, including claim interpretation, inventive step, infringement by equivalent means and procedural case management. Art. 19 UPCA provides the institutional framework for exchanging and disseminating these developing approaches throughout the Court.
The Court shall apply Union law in its entirety and shall respect its primacy.
Art. 20 UPCA requires the Court to apply Union law in its entirety and to respect its primacy. The Court of Appeal has clarified that this obligation applies to both the substantive and procedural law applied by the UPC.
The UPC must interpret its own substantive and procedural law in a manner consistent with Union law. Where such an interpretation is impossible, the Court must, in rare cases and of its own motion, disapply a rule or practice which is contrary to a provision of Union law having direct effect.
For the purposes of Art. 20 UPCA, Union law includes the TEU, the TFEU, the Charter of Fundamental Rights, the general principles of Union law as developed by the CJEU, CJEU case law and secondary Union law. A need to interpret Union law may arise where a provision of the UPCA or the RoP implements or relates to a directive, regulation or international agreement to which the Union is a party. This applies irrespective of whether the UPCA or the RoP expressly refers to the relevant Union law instrument. The references to Union legislation in the UPCA and the RoP are not exhaustive (Court of Appeal, UPC_CoA_380/2025, order of 20 August 2025 – expert e-Commerce v Seoul Viosys).
A concrete consequence of the primacy of Union law was addressed in LD Mannheim, UPC_CFI_162/2024, decision of 11 March 2025 – Hurom v NUC. The LD Mannheim held that Art. 26 Brussels I bis prevails over R. 19.7 RoP. Consequently, an objection to international jurisdiction does not necessarily have to be raised by way of a preliminary objection under R. 19 RoP. Where the requirements of Art. 26 Brussels I bis are relevant, it is sufficient that the defendant raises the objection to international jurisdiction in its first defence. The procedural requirements of the RoP cannot restrict the operation of directly applicable Union law.
Art. 20 UPCA has also played a role in proceedings concerning the registration of unitary effect. In CD Paris, UPC_CFI_1771/2025, decision of 30 December 2025 – Papst Licensing v EPO, the Court emphasised that the UPC applies Union law in its entirety and respects its primacy when reviewing decisions of the EPO concerning requests for unitary effect. The Court considered compliance with the guarantees of the Union legal order in the administrative proceedings to be of particular importance, while leaving open the separate question whether and to what extent the EPO itself is directly bound by Union law.
In Court of Appeal, UPC_CoA_8/2026, decision of 9 February 2026 – Papst Licensing v EPO, the Court applied Art. 3(1) of Regulation (EU) No 1257/2012 according to its wording and held that a European patent can benefit from unitary effect only if it was granted with the same set of claims in respect of all participating Member States. The Court rejected an interpretation which would permit unitary effect despite the absence of a designation for one participating Member State, since such an interpretation would be contra legem. It also rejected the request for a preliminary reference to the CJEU, considering the interpretation of the relevant Union law provisions to be acte clair.
The relationship between the UPCA and Union rules on international jurisdiction has provided a further field of application of Art. 20 UPCA. In Court of Appeal, UPC_CoA_312/2025, UPC_CoA_333/2025, UPC_CoA_880/2025 and UPC_CoA_882/2025, decision of 2 June 2026 – Fujifilm v Kodak, the Court examined whether the exercise of jurisdiction over infringement actions concerning non-UPC designations of European patents was compatible with Union law. The Court stressed that the UPCA must be interpreted in conformity with the Brussels I bis Regulation and the CJEU's case law, including Owusu and BSH v Electrolux. Art. 20 UPCA did not require a different conclusion. In particular, Art. 34 UPCA could not be interpreted as restricting international jurisdiction otherwise conferred under the Brussels I bis Regulation.
Finally, the obligation to respect Union law is closely connected with the UPC's power and duty under Art. 21 UPCA and Art. 267 TFEU to refer questions of Union law to the CJEU. In Court of Appeal, UPC_CoA_789/2025 and UPC_CoA_813/2025, order of 6 March 2026 – Dyson v Dreame, the Court made the UPC's first preliminary reference to the CJEU. The questions concerned, inter alia, the interpretation of the Brussels I bis Regulation in relation to jurisdiction over a third-state defendant and the interpretation of Art. 9(1)(a) of the Enforcement Directive. The referral illustrates the practical interaction between Art. 20 UPCA, which requires the UPC to apply Union law in its entirety and respect its primacy, and Art. 21 UPCA, which provides the procedural mechanism for obtaining an authoritative interpretation of Union law from the CJEU.
As a court common to the Contracting Member States and as part of their judicial system, the Court shall cooperate with the Court of Justice of the European Union to ensure the correct application and uniform interpretation of Union law, as any national court, in accordance with Article 267 TFEU in particular. Decisions of the Court of Justice of the European Union shall be binding on the Court.
As a court common to the Contracting Member States and forming part of their judicial system, the UPC may, and where required under Art. 267 TFEU must, refer questions concerning the interpretation or validity of Union law to the CJEU. The preliminary-reference procedure does not extend to the interpretation of the UPCA or the RoP as such.
The Court of Appeal made the UPC's first preliminary reference to the CJEU in UPC_CoA_789/2025 and UPC_CoA_813/2025, order of 6 March 2026 – Dyson v Dreame. The questions referred concern the interpretation of the Brussels I bis Regulation and Art. 9(1)(a) of Directive 2004/48/EC.
The Court of Appeal referred four questions concerning, in essence, whether Art. 8(1) in conjunction with Art. 71b(2) Brussels I bis permits the UPC to exercise jurisdiction over a third-state defendant in relation to alleged infringement of a European patent in a non-UPC EU Member State where a co-defendant established in a UPC Member State is alleged to act merely as an intermediary; whether Art. 71b(2) Brussels I bis permits provisional measures against a third-state defendant extending to such a non-UPC EU Member State; whether the involvement of a company established in a UPC Member State is relevant to that assessment; and whether Art. 9(1)(a) of Directive 2004/48/EC permits an injunction against an authorised representative under EU product-safety legislation whose services are used by a third party to place allegedly infringing products on the market.
The Court of Appeal stayed the appeal only to the extent affected by the referred questions, namely the action against the third-state defendant concerning Spain and the action against the authorised representative. It continued the appeal in relation to the remaining defendants and the UPC territory. A referral to the CJEU therefore does not necessarily require a stay of the proceedings in their entirety where the questions of Union law concern only separable parts of the dispute.
The limits of Art. 21 UPCA were clarified in Court of Appeal, UPC_CoA_380/2025, order of 20 August 2025 – expert e-Commerce v Seoul Viosys. The UPC cannot ask the CJEU to interpret the UPCA or the RoP as such. A request for a preliminary ruling must concern a rule of Union law applicable to the case. The RoP are, for the purposes of the preliminary-reference procedure, comparable to national procedural law and their interpretation does not itself fall within the jurisdiction of the CJEU. Accordingly, questions concerning the interpretation of Art. 69 UPCA and R. 151 RoP could not be referred to the CJEU.
This distinction was confirmed in Court of Appeal, UPC_CoA_166/2026, order of 16 March 2026 – Ecovacs v Roborock. A preliminary reference must concern the interpretation or validity of Union law and cannot concern the interpretation of the UPCA or the RoP, rules of national law or questions of fact raised in the proceedings.
The mere invocation of the Charter of Fundamental Rights does not, by itself, establish a basis for a preliminary reference. In Court of Appeal, UPC_CoA_85/2026, order of 28 April 2026 – Suinno v Microsoft, the Court held that the request must concern a rule of Union law, other than the Charter, which is applicable to the main proceedings. The Court refused a referral concerning a security-for-costs order because it considered it beyond reasonable doubt that the Enforcement Directive and the TRIPS Agreement did not preclude such an order. Where the interpretation of the relevant Union law is clear and leaves no reasonable doubt, a referral is not required.
Art. 22 UPCA relates to the joint and several State liability for damage caused by infringements of Union law. The material law is commented on in Art. 5 UPCA.
Actions of the Court are directly attributable to each Contracting Member State individually, including for the purposes of Articles 258, 259 and 260 TFEU, and to all Contracting Member States collectively.
Commentary
Art. 23 UPCA ensures that the establishment of the UPC as a court common to the Contracting Member States does not remove the Court's actions from the system of responsibility under Union law. Actions of the UPC are directly attributable to each Contracting Member State individually and to all Contracting Member States collectively.
This attribution applies, in particular, for the purposes of infringement proceedings under Arts. 258 to 260 TFEU. An infringement of Union law by the UPC, including a failure to comply with its obligations concerning preliminary references to the CJEU, may therefore engage the responsibility of the Contracting Member States. Art. 23 UPCA complements Arts. 20 and 21 UPCA, which require the UPC to respect the primacy of Union law and to cooperate with the CJEU under Art. 267 TFEU. It also complements the rules on joint and several liability for damage caused by infringements of Union law under Art. 22 UPCA.
The Court of Appeal expressly relied on Art. 23 UPCA in UPC_CoA_478/2025, order of 6 October 2025 – Roku v Dolby. In addressing the risk of conflicting decisions by the UPC and national courts, the Court stressed that the UPC does not completely supersede the national courts. It further referred to the UPC's obligation under Art. 21 UPCA to cooperate with the CJEU and to the direct attribution of the UPC's actions to the Contracting Member States under Art. 23 UPCA.
According to the Court of Appeal, these mechanisms form part of the safeguards inherent in the UPC system. If the UPC considers that a national court may have interpreted Union law incorrectly, it may refer the relevant question of Union law to the CJEU under Art. 267 TFEU. Conversely, national courts may refer questions concerning the interpretation of Union law where they consider that the UPC has interpreted Union law incorrectly. Art. 23 UPCA ensures, in addition, that actions of the UPC remain attributable to the Contracting Member States for the purposes of Union law responsibility (Court of Appeal, UPC_CoA_478/2025, order of 6 October 2025 – Roku v Dolby).
1. In full compliance with Article 20, when hearing a case brought before it under this Agreement, the Court shall base its decisions on:
(a) Union law, including Regulation (EU) No 1257/2012 and Regulation (EU) No 1260/2012 (1);
(b) this Agreement;
(c) the EPC;
(d) other international agreements applicable to patents and binding on all the Contracting Member States; and
(e) national law.
2. To the extent that the Court shall base its decisions on national law, including where relevant the law of non-contracting States, the applicable law shall be determined:
(a) by directly applicable provisions of Union law containing private international law rules, or
(b) in the absence of directly applicable provisions of Union law or where the latter do not apply, by international instruments containing private international law rules; or
(c) in the absence of provisions referred to in points (a) and (b), by national provisions on private international law as determined by the Court.
3. The law of non-contracting States shall apply when designated by application of the rules referred to in paragraph 2, in particular in relation to Articles 25 to 28, 54, 55, 64, 68 and 72.
Footnote
(1) Council Regulation (EU) No 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements (OJ L 361, 31.12.2012, p. 89) including any subsequent amendments.
As to the applicability of R. 80 EPC see commentary at R. 30.1 RoP.
As to claim interpretation and Art 69 EPC: see commentary at Art. 25 and 65.
In UPC_CoA_405/2024 (Alexion v Amgen, order of 19 June 2025) the Court of Appeal stressed that party representatives before the UPC must be thoroughly familiar with, and able to deploy, the jurisprudence of the EPO’s Technical Boards of Appeal and the Enlarged Board of Appeal. This body of case law is part of the legal environment that a diligent European Patent Attorney or lawyer qualified under Art. 48 UPCA is expected to master; overlooking it cannot later be reframed as a breach of the right to be heard (Art. 76) or as a fundamental procedural defect (Art. 81).
continued infringement after 1 June 2023
Where allegedly infringing conduct commenced before the entry into force of the UPCA but the infringement continued after 1 June 2023, the provisions of the UPCA apply as a default. Whether there is a continuing infringement requires a normative assessment and cannot be determined solely on the basis of a formal or purely factual continuity of conduct.
A sale of the contested embodiment after 1 June 2023 may establish such continued infringement. By contrast, the mere refusal to provide a cease-and-desist declaration is not sufficient to establish that the infringement continued after the entry into force of the UPCA (LD Düsseldorf, UPC_CFI_811/2024, decision of 22 June 2026 – Evac v. Shanghai VacDrain et al.).
foreign law may apply beyond the expressly listed Articles
The application of the law of non-contracting States under Art. 24(3) UPCA is not limited to the matters expressly listed in that provision. The words “in particular” make clear that foreign national law may also have to be applied in relation to other matters governed by the UPCA. This is relevant, inter alia, where the UPC exercises jurisdiction over an infringement action based on a national designation of a European patent outside the UPC territory (Court of Appeal, UPC_CoA_312/2025, UPC_CoA_333/2025, UPC_CoA_880/2025 and UPC_CoA_882/2025, decision of 2 June 2026 – Fujifilm v Kodak).
A patent shall confer on its proprietor the right to prevent any third party not having the proprietor's consent from the following:
(a) making, offering, placing on the market or using a product which is the subject-matter of the patent, or importing or storing the product for those purposes;
(b) using a process which is the subject-matter of the patent or, where the third party knows, or should have known, that the use of the process is prohibited without the consent of the patent proprietor, offering the process for use within the territory of the Contracting Member States in which that patent has effect;
(c) offering, placing on the market, using, or importing or storing for those purposes a product obtained directly by a process which is the subject-matter of the patent.
1. Literal infringement – claim interpretation
In UPC_CFI_292/2023 (SES-imgotag SA v. Hanshow Technology et al., order of 20 December 2023), the Local Division Munich considered the prosecution history and found that the original version of the claims of a European patent may be used as an aid to interpretation in connection with amendments to the claims made during the grant proceedings.
In G 1/24 – decision of 18 June 2025, the Enlarged Board of Appeal of the EPO confirmed that examiners, opposition divisions and technical boards must always read the claims in the light of the description and drawings when judging novelty and inventive step. Limiting recourse to the specification to cases of linguistic doubt is no longer an option. With that, the Enlarged Board closed ranks with the UPC. Neither Art 69 (+Protocol) nor Art 84 on their own fully explain how to construe claims for patentability. Rather than elevate one over the other, the Enlarged Board distilled two “principles” from decades of case law: (i) Claims are the starting point and basis for the Art 52–57 EPC analysis. (ii)The description/drawings are always consulted, not only upon ambiguity. Divergence from national courts or the UPC would be “most unattractive”; the EPC’s very purpose is uniformity.
2. Second medical use claims
In UPC_CFI_505/2024 (Sanofi v Amgen, decision of 13 May 2025), the court set out general principles for the assessment of infringement of second medical use claims. The court noted that the purpose-limitation of such a claim contrasts the claim from a “normal” product claim which affords absolute protection, regardless of its (intended) use. Therefore, the claimants must prove that the allegedly infringing product fulfils the “use” feature(s) of the claim. The court ruled out a limitation of the scope of protection to cases where the product is already or actually being used for the claimed therapeutic purposes as unduly limiting the protection of the patent proprietor. Rather, for a finding of infringement, the infringer must offer or place the medical product on the market in such a way that it leads or may lead to the claimed therapeutic use of which the alleged infringer knows or reasonably should have known that it does require are therefore an objective element - a prescription for the use or circumstances showing that such use may be expected to occur – and a subjective element – the infringer must know or should reasonably have known of this.
According to the court, the requirements cannot be defined in an abstract manner, but require an analysis of all the relevant facts and circumstances of the case. Starting from the construction of the patent claim in question, relevant facts may include:
The manufacturing of the product, the package insert, the SmPC of a pharmaceutical product can be important, but are not always the decisive factor to be taken into account in assessing whether the alleged infringer is in the end liable for patent infringement.
In UPC_CFI_440/2023 (LD Paris, Seoul Viosys v Laser Components, decision of 24 April 2025), the court held that Art. 25 UPCA does not require the claimant to prove that the defendant has been put on notice of the existence of the patent and the materiality of the infringement the defendant is accused of. It suffices that the claimant proves that the defendant is an economic operator who manufactures, places on the market or uses products protected by a patent, or imports or holds them in stock for these purposes, without the consent of the proprietor for him to be judged an infringer.
Infringement of a medical device requires a potential use to be lege artis. A use that damages the device as protected cannot establish infringement.
According to the Decision UPC_CFI_628/2024 and UPC_CFI_125/2025 of the LD Munich issued on 13.01.2026 (Emboline vs. AorticLab), it must be conceded to the patent owner that a patent infringement is not excluded by the fact that a device is normally operated differently and that customers therefore do not regularly make use of the patent-infringing teaching. It is also true that patent infringement can be affirmed in such a case even if the manufacturer expressly specifies a different use for its device, as long as the use of the patented teaching remains possible.
However, at least in the case of a medical device, the possibility of use in accordance with the patented teaching can only be assumed if such use is in line with professional practice and with the recognised rules of medical science.
To minimise risks and ensure the best possible quality, the use of such a device lege artis means that the procedure is performed in accordance with the recognised rules of medical practice, i.e., professionally, carefully, and in accordance with current medical standards. This includes correctly applying the device, particularly inserting and removing it correctly, to avoid complications such as bleeding or vascular injuries.
In the decided case, using the attacked embodiment in connection with a hook to retrieve the device from the blood vessel does not constitute proper, professional and intended use of the attacked embodiment. The very fact that a part of the device, namely the mesh, is damaged in this process shows that this is not a procedure that uses the features of the attacked embodiment intended for this purpose. Such a procedure can at best be described as the use of unconventional methods in an emergency. However, the use of a hook in very exceptional and unforeseen circumstances cannot play a role in the assessment of patent infringement. In view of the standards applicable to medical devices, the use to be assessed here is not comparable with the action of a plumber who retrieves an object lost in a drainpipe, whereby any damage to the object or the drainpipe may be accepted in order to clear the drainpipe. Using the attacked embodiment in combination with a hook is therefore irrelevant in this context. The court does not see any reason to assume that the use of a hook as described by the patent owner or claimant, respectively, is a method lege artis for retrieving the attacked embodiment.
3. Infringement by equivalent means
Art. 69 EPC and the Protocol on its interpretation require a balance between fair protection for the patent proprietor and reasonable legal certainty for third parties. On this basis, several first-instance divisions have developed approaches for assessing infringement by equivalent means. The Court of Appeal has not yet determined a definitive UPC-wide test.
In LD The Hague, UPC_CFI_239/2023, decision of 22 November 2024 – Plant-e v Bioo, the Court developed a four-part test. Under this approach, a variation is equivalent to an element specified in the claim if the following four questions are answered in the affirmative:
The first three criteria show considerable similarities to the German test for infringement by equivalent means, which considers whether the modified means achieve the same effect, whether the modified means were obvious to the skilled person on the basis of the patent, and whether the considerations leading the skilled person to the modified means are sufficiently oriented towards the meaning of the technical teaching protected by the claim. The fourth criterion corresponds in effect to the Formstein defence.
A different analytical framework was applied by the LD Brussels in UPC_CFI_376/2023, decision of 17 January 2025. The Court considered both the Function-Way-Result test and the Insubstantial Differences test. Under the Function-Way-Result test, the variation must perform substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed invention. The Insubstantial Differences test considers whether the differences between the claimed invention and the contested embodiment would be regarded as insignificant by the skilled person.
Applying these approaches to mandibular advancement devices, the LD Brussels rejected equivalence. Although the contested device pursued a similar overall objective, its coupling elements were positioned differently and operated through a different mechanism. In particular, the forces were centralised in the occlusal plane rather than redirected to coupling elements in the vestibulum oris. The differences therefore concerned the way in which the technical result was achieved and were not merely insubstantial.
The four-part test developed in Plant-e v Bioo was further applied by the LD The Hague in UPC_CFI_187/2024 and UPC_CFI_507/2024, decision of 18 November 2025 – Advanced Cell Diagnostics v Molecular Instruments. The Court's reasoning illustrates that the contribution of the patented invention and the requirement of reasonable legal certainty may significantly limit the scope of protection by equivalence.
The Court considered it difficult, if not impossible, to determine how much overlap between probe sequences could still be regarded as equivalent to a claim expressly requiring “non-overlapping” sequences. Extending protection to an undefined degree of overlap would therefore create unacceptable uncertainty for third parties.
The Court further took account of the contribution of the invention to the state of the art. Although the patents were valid, the Court considered that they did not represent a very significant step in the development of in situ assays, since the individual elements of the claimed inventions were already known and only their combination was new. Against this background, fair protection for the patent proprietor did not require a broad extension of the claim by equivalence. Thus, the extent of the patent proprietor's contribution to the art may be relevant when determining the scope of protection justified under the doctrine of equivalents.
Finally, the Court considered the independent technical function of the differing feature. The overlap of one to four nucleotides in the contested probes was not merely a workaround of the claimed non-overlapping arrangement. It served a specific technical purpose by reducing the kinetic barrier to branch migration and accelerating the initiation of amplification. A variation which serves a technical function of its own and may even improve upon the claimed teaching is less likely to constitute an equivalent implementation, in particular where that technical approach was not envisaged in the patent.
The four-part test developed by the LD The Hague was subsequently expressly endorsed by the LD Düsseldorf in LD Düsseldorf, UPC_CFI_807/2024 and UPC_CFI_334/2025, decision of 27 May 2026 – Wonderland v Cybex. The LD Düsseldorf considered the criteria to form a coherent framework for assessing infringement by equivalent means and found no reason in the case before it to apply a different standard.
The LD Düsseldorf further clarified the assessment of technical equivalence under the first criterion. Technical equivalence cannot be established merely by showing that the variation achieves the same overall objective as the patented invention. The claimant must identify the function performed by each substituted claim feature in achieving that objective and explain why the corresponding variation performs essentially the same function. The assessment must therefore remain tied to the individual claim features that are not implemented literally. An analysis conducted only at the level of the overall purpose or result of the invention is insufficient.
As regards fair protection for the patent proprietor, the LD Düsseldorf held that, as a general rule, it will not be obvious to the skilled person how to apply an equivalent element where this requires a complete redesign of the claimed device. A fundamental rearrangement of several components is not comparable to the simple substitution of one known means for another and therefore points against extending protection by equivalence.
The extent of the required structural modification is also relevant to reasonable legal certainty for third parties. Where the claim specifies a particular arrangement of components and the patent teaches that the relevant technical effect is achieved precisely by that arrangement, the skilled person will not normally understand the scope of protection as extending to a fundamentally different configuration. The mere absence of an express statement excluding other arrangements is insufficient to establish that such arrangements are covered by equivalent means.
consent as a limitation inherent in the exclusive right
The exclusive rights under Art. 25 UPCA apply to acts carried out without the consent of the patent proprietor. Conversely, a patent proprietor cannot rely on its patent against an act of use to which it has consented.
Consent may in principle be implied. However, a commercial relationship between the alleged infringer and another company does not, without more, establish consent by the patent proprietor merely because that company is subsequently acquired by or merged into a company of the patent proprietor's group. The existence of consent must be established in relation to the patent proprietor and the relevant acts of use (LD Düsseldorf, UPC_CFI_811/2024, decision of 22 June 2026 – Evac v. Shanghai VacDrain et al.).
In UPC_CFI_07/2023 (Kaldewei v. Bette, decision of 3 July 2024), the court explicitly left undecided the question of whether, for indirect infringement of a European patent subject to the jurisdiction of the UPC but not a unitary patent (i.e. a “bundle patent”), the offer for sale and/or delivery must take place in the same contracting state as the use of the invention or may aimed at use in a different contracting state. The court noted that different legal commentaries have come to opposite conclusions in this regard.
Concerning indirect use of an invention it is to be referred to the decision UPC_CFI_248/2024 of the LD Munich issued on 22.08.2025 (Brita v. Aquashields et al) where it is stated:
According to Article 26(1) of the UPCA, a patent confers on its proprietor the right to prohibit third parties from, without his consent, in the territory of the contracting member states in which the patent has effect, supplying or delivering to persons other than those entitled to use the patented invention means which are based on an essential element of the invention for the purpose of using the invention in that territory, if the third party knows or ought to have known that these means are suitable and intended for use in the invention. Indirect patent infringement therefore requires the existence of objective and subjective elements.
The contested embodiment is also a means that relates to an essential element of the invention protected. This can be assumed if the means is suitable for interacting functionally with one or more features of the patent claim in realising the protected invention. What constitutes an essential element of the invention in this sense must be determined on the basis of the subject matter of the invention. Since the patent claim is decisive in determining which subject matter is protected by the patent, all features specified in the patent claim are generally essential elements of the invention. This is regardless of whether they are in the preamble or in the characterising part of the patent claim. It is irrelevant whether they relate to the ‘core’ of the invention or whether the essential element of the invention distinguishes the subject matter of the patent claim from the prior art.
As the recipients of the offer and purchasers of the contested embodiment are private end users who, pursuant to Art. 27a UPCA, act in a privileged manner and themselves cannot be sued for patent infringement on the basis of this privilege, this does not preclude this. This privilege does not affect third parties.
According to the legal fiction of Art. 26(3) UPCA, private end users are expressly not considered to be entitled to use the invention within the meaning of paragraph 1.
The above mentioned considerations have been confirmed by the LD Düsseldorf in its Decision UPC_CFI_811/2024 issued on 22.06.2026 (EVAC v. Shanghai VacDrain et al) as follows:
Under Article 26(1) of the UPCA, the defendants may not, without the claimant’s consent, within the territory of the contracting Member States in which the contested patent is in force, offer or supply to persons other than those entitled to use the protected invention, means relating to an essential element of the invention, for the purpose of using the invention in that territory if they know, or ought to have known, that those means are suitable and intended for use in implementing the invention.
What means an essential feature or element, respectively, of the invention?
Such a feature is to be assumed if the means is capable of interacting functionally with one or more features of the patent claim in the realisation of the protected inventive concept. What constitutes an essential element of the invention in this sense must be determined on the basis of the subject-matter of the invention. Since the patent claim is decisive in determining which subject-matter is protected by the patent, all features named in the patent claim are generally essential elements of the invention, irrespective of whether they appear in the general part or the characterising part of the patent claim. In particular, it is irrelevant whether they relate to the ‘core’ of the invention or whether the essential element of the invention distinguishes the subject-matter of the patent claim from the prior art (UPC_CoA_901/2025, Order of 27 March 2026, para. 167 – ONWARD v Niche; UPC_CFI_248/2024 (Munich Regional Court), decision of 22 August 2025, para. 228 – BRITA v AQUASHIELD; UPC_CFI_779/2024 (Düsseldorf Regional Court), judgment of 16 April 2026, para. 141 – BRITA v Wessper).
The rights conferred by a patent shall not extend to any of the following:
(a) acts done privately and for non-commercial purposes;
(b) acts done for experimental purposes relating to the subject-matter of the patented invention;
(c) the use of biological material for the purpose of breeding, or discovering and developing other plant varieties;
(d) the acts allowed pursuant to Article 13(6) of Directive 2001/82/EC (1) or Article 10(6) of Directive 2001/83/EC (2) in respect of any patent covering the product within the meaning of either of those Directives;
(e) the extemporaneous preparation by a pharmacy, for individual cases, of a medicine in accordance with a medical prescription or acts concerning the medicine so prepared;
(f) the use of the patented invention on board vessels of countries of the International Union for the Protection of Industrial Property (Paris Union) or members of the World Trade Organisation, other than those Contracting Member States in which that patent has effect, in the body of such vessel, in the machinery, tackle, gear and other accessories, when such vessels temporarily or accidentally enter the waters of a Contracting Member State in which that patent has effect, provided that the invention is used there exclusively for the needs of the vessel;
(g) the use of the patented invention in the construction or operation of aircraft or land vehicles or other means of transport of countries of the International Union for the Protection of Industrial Property (Paris Union) or members of the World Trade Organisation, other than those Contracting Member States in which that patent has effect, or of accessories to such aircraft or land vehicles, when these temporarily or accidentally enter the territory of a Contracting Member State in which that patent has effect;
(h) the acts specified in Article 27 of the Convention on International Civil Aviation of 7 December 1944 (3), where these acts concern the aircraft of a country party to that Convention other than a Contracting Member State in which that patent has effect;
(i) the use by a farmer of the product of his harvest for propagation or multiplication by him on his own holding, provided that the plant propagating material was sold or otherwise commercialised to the farmer by or with the consent of the patent proprietor for agricultural use. The extent and the conditions for this use correspond to those under Article 14 of Regulation (EC) No 2100/94 (4);
(j) the use by a farmer of protected livestock for an agricultural purpose, provided that the breeding stock or other animal reproductive material were sold or otherwise commercialised to the farmer by or with the consent of the patent proprietor. Such use includes making the animal or other animal reproductive material available for the purposes of pursuing the farmer's agricultural activity, but not the sale thereof within the framework of, or for the purpose of, a commercial reproductive activity;
(k) the acts and the use of the obtained information as allowed under Articles 5 and 6 of Directive 2009/24/EC (5), in particular, by its provisions on decompilation and interoperability; and
(l) the acts allowed pursuant to Article 10 of Directive 98/44/EC (6).
Footnote
(1) Directive 2001/82/EC of the European Parliament and of the Council of 6 November 2001 on the Community code relating to veterinary medicinal products (OJ L 311, 28.11.2001, p. 1) including any subsequent amendments.
(2) Directive 2001/83/EC of the European Parliament and of the Council of 6 November 2001 on the Community code relating to medicinal products for human use (OJ L 311, 28.11.2001, p. 67) including any subsequent amendments.
(3) International Civil Aviation Organization (ICAO), ‘Chicago Convention’, Document 7300/9 (9th edition, 2006).
(4) Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights (OJ L 227, 1.9.1994, p. 1) including any subsequent amendments.
(5) Directive 2009/24/EC of the European Parliament and of the Council of 23 April 2009 on the legal protection of computer programs (OJ L 111, 5.5.2009, p. 16) including any subsequent amendments.
(6) Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions (OJ L 213, 30.7.1998, p. 13) including any subsequent amendments.
Any person, who, if a national patent had been granted in respect of an invention, would have had, in a Contracting Member State, a right based on prior use of that invention or a right of personal possession of that invention, shall enjoy, in that Contracting Member State, the same rights in respect of a patent for the same invention.
In UPC_CFI_07/2023 (Kaldewei v. Bette, decision of 3 July 2024), the court held that the existence of a prior user right must be substantiated for each of the contracting states in which the patent is in force. The defendant/accused infringer must demonstrate that the conditions for the existence of a prior user right laid down by the national law of the contracting state concerned are met. In view of the clear wording of Art. 28 UPCA, there can be no EU-wide prior user right.
In UPC_CFI_50/2024 (LD Düsseldorf, Yellow Sphere v Tabbert, decision of 10 April 2025), the court also held that the existence of a prior user right must be substantiated for each of the states in which the patent provides protection under the conditions of that state. The court left open the question of whether the existence of a prior user right must be asserted by way of a counterclaim or can be pleaded as a defence against an infringement claim.
In UPC_CoA_880/2025 issued on 02.06.2026 (Kodak v. Fujifilm) the Court of Appeal held that according to Article 28 UPCA,
“Any person, who, if a national patent had been granted in respect of an invention, would have had, in a Contracting Member State, a right based on prior use of that invention or a right of personal possession of that invention, shall enjoy, in that Contracting Member State, the same rights in respect of a patent for the same invention.”
Whether a right of private prior use in respect of the German designation of the Patent may be relied on is thus to be determined under German law.
The rights conferred by a European patent shall not extend to acts concerning a product covered by that patent after that product has been placed on the market in the European Union by, or with the consent of, the patent proprietor, unless there are legitimate grounds for the patent proprietor to oppose further commercialisation of the product.
In UPC_CFI_9/2023 (Huawei v. Netgear, decision of 18 December 2024), the court set out some basic substantive and procedural tenets relating to Art. 29 UPCA.
The effects of exhaustion of rights extend firstly to device claims. They also, however, extend to method claims directed to the handling of a product protected by the patent. This applies both to products directly obtained through an application of the patented method carried out with the permission of the proprietor and to a product that uses a method claim, when it is also protected by a product claim and has been placed on the market with the permission of the proprietor. Exceptions exist for cases in which the proprietor has expressly reserved permission to use this method. The effects of exhaustion of rights also extend to a product in which the product to which the proprietor’s permission pertains has been incorporated (in the case at hand: an access point comprising a modem covered by a licence agreement concluded with the manufacturer of the modem).
As regards the applicable law, the question of whether permission has been granted in a contract is to be determined in accordance with the law applicable to the contract. The legal consequences of that permission, on the other hand, are to be determined in accordance with the law of the territory in which the patent has effect. The parties cannot agree on the application of a different law.
Placing a product on the market outside the European Union does not result in an exhaustion of rights, even if with the permission of the proprietor. Whether a product has been placed on the market is a matter of fact, to be determined in respect of individualised products.
According to Art. 29, 2nd half-sentence UPCA, exhaustion exists only and to the extent that the proprietor cannot advance legitimate grounds to oppose further commercialisation of the product. According to the court, it is recognised in the context of patent law that limitations that the proprietor has imposed in a licence agreement on the authorisation to use products placed on the market pursuant to the licence in principle do not affect the arising of the effects of exhaustion of rights. In view of this, the court deemed it doubtful that a legitimate interest of the proprietor in forbidding further marketing could ever be assumed. It should at least be possible for a legitimate interest ruling out exhaustion for the downstream market to be recognisable. Only then could the adverse effects on the marketability of such products be limited to the absolute minimum required.
Procedurally, the alleged infringer bears the burden of proof for placement on the market in the European Union supported by permission from the proprietor. He must set out, and in case of dispute prove, specific acts of placement on the market in the European Union in relation to individualised product. If the proprietor’s permission only applies to products placed on the market within a certain period of time, the case put forward must relate to this as well.
On the other hand, the proprietor bears the burden of proving legitimate reasons to oppose further commercialisation.
Where the exception of exhaustion concerns all alleged infringing embodiments, it is to be dealt with immediately in the proceedings on the merits. If not, it depends on the circumstances whether the question of exhaustion is to be determined definitively in the damages proceedings (enforcement proceedings), but this decision can be prepared in the proceedings on the merits. In that case, a conviction in the proceedings on the merits would be with reservations conditional on evidence of specific acts of placing on the market of individualised products in the relevant time period.
replacement versus reconstruction
Exhaustion of a patented overall product does not necessarily extend to the supply and installation of replacement components. In distinguishing permissible repair from a new manufacture of the patented subject-matter, it is relevant whether the patented technical teaching is embodied in the replaced component itself.
Where the patented technical teaching is embodied in the replacement component, the installation of that component may result in a new manufacture of the protected device rather than a permissible repair of an exhausted product. Such new manufacture remains subject to the exclusive right of the patent proprietor (LD Düsseldorf, UPC_CFI_811/2024, decision of 22 June 2026 – Evac v. Shanghai VacDrain et al.).
A supplementary protection certificate shall confer the same rights as conferred by the patent and shall be subject to the same limitations and the same obligations.
The international jurisdiction of the Court shall be established in accordance with Regulation (EU) No 1215/2012 or, where applicable, on the basis of the Convention on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (Lugano Convention) (1).
Footnote
(1) Convention on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, done at Lugano on 30 October 2007, including any subsequent amendments.
Concerning the international jurisdiction the UPC has in relation to defendants each located in
the LD Hamburg summarized in its Final Order UPC_CFI_2255/2025 delivered on 07.04.2026 (Dyson vs. Dreame) as follows, wherein infringements were detected among others in Germany, The Netherlands, Sweden (=UPCA-member states) as well as in UK and Spain:
In more detail:
INTERNATIONAL JURISDICTION
The UPC has international jurisdiction over the dispute with respect to Defendants 1), 2), 3) and 4). The case against Defendant 5) is inadmissible due to the lack of international jurisdiction of the UPC. International jurisdiction is only contested with respect to the alleged infringement of the Spanish patent and the UK part of the patent by Defendants. As far as international jurisdiction is not contested this is to be considered a submission under the international jurisdiction of the UPC and the competence of the LD Hamburg in analogy with Rule 19.7 RoP.
I. UPCA TERRITORY
Art. 31 UPCA stipulates that the international jurisdiction of the UPC shall be established in accordance with Regulation (EU) No 1215/2012 (Brussels I recast, hereinafter “BR”) or, where applicable, on the basis of the Convention on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (Lugano Convention). Art. 71 a-d BR incorporated the UPC as a new common court into the existing Brussels recast Regulation System (LD Düsseldorf, 28 January 2025 – UPC_CFI_355/2023, ACT_578607/2023 – FUJI Film). Thus, the UPC is a common court within the meaning of Art. 71a (1) BR, see Art. 71a (2) (a) BR. According to Art. 71b (1) BR, the UPC as a ‘common court’ of several EU Member States (Art. 71a) has jurisdiction in patent matters (within the meaning of the UPCA), if a court of an EU Member State that is a party to the UPCA would be competent (if the UPC did not exist) under the rules of jurisdiction of the Brussels-Ia Regulation (Bopp/Kircher EurPatentprozess-HdB/Bopp/Krumm, 3rd ed. 2025, Section 8, para. 11). This means that, in relation to claims against defendants domiciled in a Member State, all the bases for jurisdiction contained in Brussels I recast Regulation also apply to the UPC.
1. Art. 4 (1) Brussels I recast (=BR)
Pursuant to Art. 4 (1) BR, persons domiciled in a Member State, whatever their nationality, shall be sued in the courts of that Member State. Following Art. 63 (1) BR a company or other legal person or association of natural or legal persons is domiciled at the place where it has its statutory seat; central administration; or principal place of business. This jurisdiction in the forum of the courts of the Member State in which the defendant is domiciled or has its seat under Art. 4 (1) BR is a universal jurisdiction (LD Düsseldorf, Order of 28 January 2025 – UPC_CFI_355/2023, ACT_578607/2023 – FUJI Film). This gives a claimant - including before the UPC as the court of residence - the option of including patents in third countries in its infringement action, long arm jurisdiction (Tilmann, GRUR 2025, 521, 523).
The jurisdiction concerning the action against Defendant 4) and Defendant 2) arises from the fact that these parties are domiciled in Contracting Member States of the UPCA, respectively, Germany and Sweden, Art. 4 in conjunction with Art. 71b(1) BR (CoA, Order of 6 March 2025 – UPC_CoA_789/2025 and UPC_CoA_813/2025, GRUR-RS 2026, 3160 mn. 17 – Injunction order Dyson/Dreame). Deviating from this panel’s previous decision (Order of 14 August 2025, UPC_CFI_387/2025, GRUR-RS 2025, 25175 mn. 40 and 44 – Dyson/Dreame I), the panel concludes that the UPC is considered to be a court of member state just like the national EU Member State courts (Art. 71a BR), with a territory encompassing all Contracting Member States. Hence, the UPC has international jurisdiction under Art. 4 BR for every defendant, who is based or domiciled within any Contracting Member State of the UPCA (CoA, Order of 6 March 2025 – UPC_CoA_789/2025 and UPC_CoA_813/2025, GRUR-RS 2026, 3160 mn. 17 – Injunction order Dyson/Dreame; see also LD The Hague, Order of 6 February 2026, UPC_CFI_875/2025, mn. 4.2.2. – Abbott/MicroTech).
Based on that, the UPC has international jurisdiction to hear the case against Defendants 2) (based in Sweden), Defendant 3) (based in The Netherlands) and Defendant 4) (based in Germany) – which is not contested.
2. Art. 7 (2) Brussels I recast
International jurisdiction of the UPC regarding Defendant 1) concerning the territory of the UPCA countries follows Art. 7 sub (2) BR, as it is the website operator for several existing country-specific websites in the territory of the UPCA with the incorporated online shops for dreamtech.com – which is not contested, either.
II. SPANISH NATIONAL PART OF THE PATENT-IN-SUIT
With respect to Defendants 1) and 3) the UPC has also jurisdiction to decide upon the infringement as far as it relates to acts infringing the Spanish national part of the patent in-suit. This aspect of international jurisdiction is contested.
1. Defendant 3)
Defendant 3) is subject to the UPC’s universal jurisdiction under Art. 4 BR in conjunction with Art. 71 b (1) BR, including alleged infringing acts with respect to the Spanish national part of the patent in suit. The connection with the UPC territory is established by the domicile of the defendant, and not the location where the acts of the defendant occurred. According to the CoA and in deviation from the Hamburg Local Division’s previous position (Order of 14 August 2025, UPC_CFI_387/2025, GRUR-RS 2025, 25175 mn. 48 – Dyson/Dreame I), it is not necessary to examine the plausibility of any acts committed by Defendant 3) in Spain for the purposes of establishing jurisdiction (CoA, Order of 6 March 2025 – UPC_CoA_789/2025 and UPC_CoA_813/2025 – Referral order Dyson/Dreame, mn. 12). Independent of that, the Claimant has made it sufficiently plausible in the present case that – as an importer – Defendant 3) could be held liable in accordance with Article 59.1 of the Spanish Patent Act as – undisputedly – the import of a goods constitutes direct patent infringement in Spain.
2. Defendant 1)
Defendant 1), who is running the online shops for dreamtech.com also in Spain, can be sued as a co-defendant under Art. 8 BR. Defendant 1) is not subject to the UPC’s universal jurisdiction according to Art. 4 (1) BR. Also, the scope of Art. 7 sub (2) BR in conjunction with Art. 71b (1) BR is limited to infringing acts in the Contracting Member States of the UPCA (CJEU, Decision of 22 January 2015 - C-441/13, GRUR 2015, 296 Rn. 36 – Pez Hejduk v EnergieAgentur.NRW, on copyrights), which Spain is not. As the court of the place where the damage occurred or may occur, the UPC has jurisdiction only to hear cases concerning damage occurring in its territory, which is the only link between the court seized and the subject matter of the dispute (CoA, Order of 13 March 2026 – UPC_CoA_922-925/2025 – Keeex/Adobe et al, mn. 44). Thus, the international jurisdiction with respect of Defendant 1) regarding the Spanish national part of the patent in suit can only be obtained by means of Art. 8 BR.
In the present case Defendant 3) serves as an anchor defendant for Defendant 1) as the remaining criteria of Art. 8 (1) BR are met.
a) Anchor Defendant
According to Art. 8 (1) BR a person domiciled in a Member State may also be sued where he is one of a number of defendants, in the courts for the place where any one of them is domiciled, provided the claims are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings. Article 71b (2) BR extends this provision for the UPC to persons not domiciled in an EU Member State. In any case, Art. 8 (1) BR requires a close connection with a defendant who is domiciled in the UPCA area and who is, thus, subject to the UPC’s universal jurisdiction (Art. 4 BR). It requires that the respective claims are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings (CoA, Order of 6 March 2025 – UPC_CoA_789/2025 and UPC_CoA_813/2025, GRUR-RS 2026, 3074 mn. 15 – Referral order Dyson/Dreame). The close connection is established in the present case regarding Spain as Defendant 3) acts as importer of the attacked embodiments to the European Union, including the Spanish market, and Defendant 1) is running the online shops for dreamtech.com also in Spain. Hence, both are jointly active in the distribution of the attacked embodiments in Spain. They belong to the same group (of legal entities) and have related commercial activities aimed at the same purpose, which is the sale of the attacked embodiments all over the EU.
b) CoA referral
The fact, that the CoA referred questions to the CJEU with order of 6 March 2026 regarding the jurisdiction of the UPC under Art. 8 BR with respect to a defendant who is domiciled in a third country does not demand a similar decision of the Local Division in the present case.
aa) Intermediaries
The questions the CoA referred to the CJEU concern the interpretation of Art. 8 BR and the question whether an intermediary can function as an anchor defendant under Art. 8 BR. This is reflected in the first question of the CoA which addresses the question whether the jurisdiction of the UPC concerning the action brought against Dreame International relating to the territory of Spain may be derived from its jurisdiction concerning another defendant (there: Eurep), who is alleged to be an intermediary whose services are used by the first company to infringe in the EU Member State that is not party to the UPCA, in order to avoid “irreconcilable judgments” resulting from separate proceedings as referred to in Art. 8(1) BR.
bb) Importer
However, in the present case the anchor defendant – the Dutch Defendant 3) – is an alleged patent infringer itself as it is an importer of the attacked embodiments to Spain. Hence, the UPC can derive its jurisdiction regarding Defendant 1) from its universal jurisdiction against Defendant 3) on the basis of already established harmonized interpretation of the Brussels Regulation.
III. UK NATIONAL PART OF THE PATENT-IN-SUIT
With respect to Defendant 3) the UPC has also jurisdiction to decide upon the infringement as far as it relates to acts infringing the UK national part of the patent-in-suit, but not with respect to Defendant 5). Defendant 3) cannot serve as an anchor defendant for Defendant 5) with respect to the territory of the UK. 1. DEFENDANT 3) 57 International jurisdiction of the UPC regarding Defendant 3) and alleged acts infringing the UK national part of the patent-in-suit follows the UPC’s universal jurisdiction under Art. 4 BR in conjunction with Art. 71 b (1) BR. Whereas Defendant 3) is not the importer of the attacked embodiments to the UK, it serves although for Defendant 1) as the EU Representative for the attacked embodiments under the EU regulations 2023/988/EU on general product safety (GPSR) and 2019/1020/EU on market surveillance and compliance of products justifies the competence of the UPC. These regulations require that non-EU based manufacturers provide for an authorized representative in the European Union.
It is undisputed that the GPSR is still applicable in Northern Ireland, which is a part of the United Kingdom, despite the fact that the UK is no longer a member of the EU. To facilitate 15 dual access to both the UK Internal Market and EU Single Market, Northern Ireland (NI) applies certain EU product safety regulations – including the EU General Product Safety Regulation (EU) 2023/988 (GPSR) (written expert testimony provided by the Applicant, exhibit A 17, mn. 26). The GPSR applies in Northern Ireland (only) as a result of the special provisions of the Withdrawal Agreement set out in the Protocol on Ireland/Northern Ireland and by virtue of the UK-EU Windsor Framework agreement. The Protocol allows for the continued application in Northern Ireland of certain EU legislation (written expert testimony provided by the Defendants, exhibit HL 37, mn. 11 and 13).
This legal framework requires a responsible economic operator based in Northern Ireland or the EU to carry out certain compliance acts, which is in the present case Defendant 3). This is regardless of the fact that the mandate given by Defendant 1) does not explicitly cover Northern Ireland. As the instalment of an EU authorized representative is mandatory for any placing on the Northern Irish market of products covered by the GPSR, like the electronics in the present case, this position is a prerequisite for the marketing of the attacked embodiments in Northern Ireland as a part of the United Kingdom. It is undisputed that Defendant 3) functions as a “contact for consumers”.
Hence, the UPC is entitled to hear the case whether Defendant 3) can in fact be subject to an injunction also under the laws of the United Kingdom. As far as the Defendants argue that specifically, the GPSR is not applicable in the majority of the United Kingdom (with reference to the opposing party’s Affidavit of Mr. Carter, Exhibit A 17, margin no. 24), application in Northern Ireland is conceded. Whether or not Defendant 3) can and/or should be subject to an injunction for acts in Northern Ireland and UK analogue Art. 9 of the Enforcement Directive is a question for the subject-matter (see below in section E. III).
2. DEFENDANT 5)
Despite the fact, that the UPC has jurisdiction over Defendant 3) based on its domicile in the UPCA countries, and could in principle be held liable as an intermediary under British law, the necessary close connection required by Art. 8 BR to subject also the British Defendant 5) to the UPC’s jurisdiction is not established. The situation is different from the previous dispute between the parties in the case UPC_CFI_387/2025, where the panel found that the installation of an authorized representative in a certain Member State of the European Union (which is a member to the UPCA), who can be held liable as an intermediary, can subjugate also a non-EU manufacturer under the jurisdiction of the UPC in that Member State, including with respect to the national parts of the patent in suit in non-UPCA or third countries (LD Hamburg, Order of 14 August 2025, UPC_CFI_387/2025, GRUR-RS 2025, 25175 mn. 63 – Dyson/Dreame I). That is because, the aforementioned legal requirements of the GPSR only serves the unlimited export from Northern Ireland to the Republic of Ireland, which is a member of the EU, and to avoid a hard border.
As these legal requirements are not designed to ensure a certain level of protection within the UK or at least Northern Ireland as a part of the UK, but to protect from an abstract risk in case the goods end up in the EU, they are not a reasonably foreseeable basis to open jurisdiction based on the principle of co-defendants. The CJEU ruled in the “Panier” decision that the fact that actions brought against several defendants are based on 16 different legal grounds does not preclude the application of Article 6(1) of Regulation No 44/2001 – which equals Art. 8 (1) BR – provided that it was foreseeable for the defendants that they could be sued in the Member State in which at least one of them was domiciled (CJEU, decision of 01. December 2011 − C-145/10, EuZW 2012, 182 mn. 81 - Painer/Standard VerlagsGmbH). Hence, foreseeability is an unwritten prerequisite when applying Art. 8 (1) BR which is an exception to the general rule of jurisdiction based on domicile of the defendant. The panel considers it not being foreseeable for the parties that this limited legal obligation to ensure the free trade of goods between Northern Ireland and the Republic of Ireland could lead to the importer to mainland UK to be subject to the UPC’s jurisdiction as a co-defendant with the GPSR required economic operator based in the EU. Furthermore, the CoA already questioned whether the case-law of the CJEU on the concept of “intermediary”, which to-date concerned services (either online or in the physical world), which enable the alleged infringing act of a third party in fact, not in law, allows to be extended to a provider of services which merely ensures compliance with certain laws, and which is not, in practice, capable of controlling the allegedly infringing act by the third party (comp. CoA, Order of 6 March 2025 – UPC_CoA_789/2025 and UPC_CoA_813/2025 – Referral order Dyson/Dreame, mn. 32).
No different result can be taken from Art. 35 BR. The CJEU limited the competence under Art. 35 BR likewise, in particular requiring that there be a real connection between the subject matter of the measures sought and the territorial jurisdiction of the Contracting State of the court seized (ECJ, decision of 17 November 1998 - Rs. C-391/95, EuZW 1999, 413, mn. 40 - Van Uden Maritime BV/Kommanditgesellschaft in Firma Deco-Line, regarding the old version in Art. 24). This mirrors the requirements set out by Art. 8 (1) BR and thus cannot lead to a different result.
IV. COMPETENCE
Insofar as the UPC has international jurisdiction over the dispute, the Local Division Hamburg has competence according to Article 33 (1) (a) and (b) UPCA.
1. The Court shall have exclusive competence in respect of:
(a) actions for actual or threatened infringements of patents and supplementary protection certificates and related defences, including counterclaims concerning licences;
(b) actions for declarations of non-infringement of patents and supplementary protection certificates;
(c) actions for provisional and protective measures and injunctions;
(d) actions for revocation of patents and for declaration of invalidity of supplementary protection certificates;
(e) counterclaims for revocation of patents and for declaration of invalidity of supplementary protection certificates;
(f) actions for damages or compensation derived from the provisional protection conferred by a published European patent application;
(g) actions relating to the use of the invention prior to the granting of the patent or to the right based on prior use of the invention;
(h) actions for compensation for licences on the basis of Article 8 of Regulation (EU) No 1257/2012; and
(i) actions concerning decisions of the European Patent Office in carrying out the tasks referred to in Article 9 of Regulation (EU) No 1257/2012.
2. The national courts of the Contracting Member States shall remain competent for actions relating to patents and supplementary protection certificates which do not come within the exclusive competence of the Court.
In UPC_CFI_50/2024, (LD Düsseldorf, Yellow Spere v. Härtwich, decision of 10 April 2025, ACT_6665/2024) it was confirmed that according to Art. 32(1)(f) UPCA (‘Actions relating to the use of an invention’) the Unified Patent Court is competent for actions relating to the use of an invention prior to the grant of a patent, including any financial compensation for the use of a published EP application.
Since the aforementioned compensation is neither regulated in the Regulations on the European patent with unitary effect nor in the UPCA, the court must apply the provision of Art. 67 UPCA on the basis of Art. 24(1)(c) UPCA, which grants the member states room for manoeuvre with regard to the structure (cf. also the table in Tilmann/Plassmann/Grabinski/W. Tilmann, Art. 32 UPCA, para. 103).
Similarly to the right of prior use, there has so far been no standardized regulation on this issue. It is therefore initially up to the claimant seeking compensation to set out the conditions for such compensation for all the individual Member States in question. At the hearing, the plaintiffs only did so with regard to the Federal Republic of Germany. There, the applicant of a published European patent application can claim compensation under Art. II § 1 para. 1 IntPatÜG from the person who used the subject matter of the application. Since there were no submission for the other member states in dispute, the plaintiffs are only entitled to reasonable compensation for the Federal Republic of Germany, but no other Member State.
In UPC_CoA_156/2025 (CoA, XSYS Germany et al. v. Esko Graphics Imaging, order of June 2, 2025), the CoA found that Art. 32(1) UPCA shall be interpretated in accordance with the principles of customary international law, which are part of the EU legal order. The absence of any temporal limitation of the rules on competence under Art. 32(1) UPCA reflects the object and purpose of the Agreement which is to create a court common to the Contracting Member States integrated into their judicial system and to transfer (exclusive) competence to said court for those actions and counterclaims listed under Art. 32 (1) UPCA, in order to prevent the difficulties caused by a fragmented market for patents in Europe and the variations between national court systems. In the absence of any provision contrary thereto, these object and purpose of the UPCA do neither suggest nor imply any temporal limitation of the Court. Art. 3 UPCA does not address the temporal scope of application of the Agreement in relation to acts infringing the rights listed therein. It therefore leaves open whether acts having occurred before the entry into force are within the scope of application of the Agreement. During the transitional period set out under Art. 83 UPCA, and unless the patent has been opted out from the exclusive competence of the Court pursuant to Art. 83(3) UPCA, the (exclusive) competence of the UPC coexists with a parallel competence of national courts before which an action for infringement of a European patent may still be brought. Although it provides for a concurrent competence during the transitional period according to which the patent holder has the option to initiate infringement proceedings either before the UPC or before a national court, said option is limited to the choice of forum and does not provide, as a result of such a choice, for a partial or limited competence of the elected court, whether as to the subject matter (the patent infringement) of the action or as to the time period for which the chosen court is competent. The determination of the competence of the Court as of the date of lodging the action, including for acts of infringement that have occurred before the entry into force of the Agreement, does not contradict the principle of non-retroactivity of treaties under the principles of customary international law and Art. 28 of the Vienna Convention on the Law of Treaties done at Vienna on 23 May 1969 (“VCLT”). In case of an effective withdrawal from an effective opt-out, the UPC is competent to decide on alleged acts of infringement which have occurred during the time period between the date of the opt-out and that of the withdrawal.
Art. 32(1)(c) – Jurisdiction of the UPC for anti-anti-suit injunctions
In UPC_CFI_755/2024 (LD Munich, Avago v. Realtek, decision of 9 December 2024), UPC_CFI_791/2024, (LD Munich, Huawei v. Netgear, decision of 12 December 2024), UPC_CFI_112/2025 (LD Munich, Nokia v. Sunmi, decision of 19 Februar 2025) and UPC_CFI_445/2025 (LD Mannheim, InterDigital v. The Walt Disney Company et al., decision of 27 May 2025) the Local Divisions Munich and Mannheim assumed their jurisdiction for interim measures in response to foreign anti-suit injunctions directed against proceedings with the UPC, so-called anti-anti-suit injunctions (cf. R. 206 RoP for more details).
The international and factual jurisdiction of the court of first instance of the Unified Patent Court for the request for interim measures against the respondents arises from Art. 31 UPCA in conjunction with Art. 7(2), Art. 71b No. 2 Regulation (EU) 1215/2012 and Art. 33(1)(a) UPCA and the factual jurisdiction from Art. 32(1)(c) UPCA in conjunction with Art. 33(1)(a) UPCA. The court states that the place of success of the threatened interference with the applicants' patent rights lies within the jurisdiction of the UPC, because the applicant would be prevented from enforcing its patents, which are subject to the jurisdiction of the UPC, before the Local Division in the infringement proceedings initiated, for which the Court has jurisdiction under Art. 32(1)(a) UPCA. In this regard, the court further stated that an (imminent) infringement of a patent within the meaning of Art. 32(1)(a) UPCA is not only its unlawful use, but also the interference with the patent proprietor's property right by requesting a prohibition order to assert the patent right in the present common forum of the UPCA contracting states, which may also be the subject of urgent legal protection under Art. 32(1)(c) UPCA.
Art. 32(1)(d) UPCA – Revocation actions against expired patents
An action for revocation may be admissible even if the patent had already expired before the action was filed. The claimant must, however, retain a legitimate legal interest in revocation. The existence of such an interest forms part of admissibility and must be examined by the Court of its own motion.
A legitimate legal interest may continue to exist after expiry where the patent proprietor pursues, or has announced its intention to pursue, claims concerning acts allegedly committed during the patent term. In the case at hand, evidence-preservation proceedings had already been initiated before a national court and the patent proprietor had announced claims for damages based on alleged past infringement. The claimants were therefore still directly affected by the expired patent and retained a legitimate legal interest in seeking its revocation (CD Paris, UPC_CFI_461/2025, decision of 22 April 2026 – Huntsman v BASF).
1. Without prejudice to paragraph 7 of this Article, actions referred to in Article 32(1)(a), (c), (f) and (g) shall be brought before:
(a) the local division hosted by the Contracting Member State where the actual or threatened infringement has occurred or may occur, or the regional division in which that Contracting Member State participates; or
(b) the local division hosted by the Contracting Member State where the defendant or, in the case of multiple defendants, one of the defendants has its residence, or principal place of business, or in the absence of residence or principal place of business, its place of business, or the regional division in which that Contracting Member State participates. An action may be brought against multiple defendants only where the defendants have a commercial relationship and where the action relates to the same alleged infringement. Actions referred to in Article 32(1)(h) shall be brought before the local or regional division in accordance with point (b) of the first subparagraph. Actions against defendants having their residence, or principal place of business or, in the absence of residence or principal place of business, their place of business, outside the territory of the Contracting Member States shall be brought before the local or regional division in accordance with point (a) of the first subparagraph or before the central division. If the Contracting Member State concerned does not host a local division and does not participate in a regional division, actions shall be brought before the central division.
2. If an action referred to in Article 32(1)(a), (c), (f), (g) or (h) is pending before a division of the Court of First Instance, any action referred to in Article 32(1)(a), (c), (f), (g) or (h) between the same parties on the same patent may not be brought before any other division. If an action referred to in Article 32(1)(a) is pending before a regional division and the infringement has occurred in the territories of three or more regional divisions, the regional division concerned shall, at the request of the defendant, refer the case to the central division. In case an action between the same parties on the same patent is brought before several different divisions, the division first seized shall be competent for the whole case and any division seized later shall declare the action inadmissible in accordance with the Rules of Procedure.
3. A counterclaim for revocation as referred to in Article 32(1)(e) may be brought in the case of an action for infringement as referred to in Article 32(1)(a). The local or regional division concerned shall, after having heard the parties, have the discretion either to:
(a) proceed with both the action for infringement and with the counterclaim for revocation and request the President of the Court of First Instance to allocate from the Pool of Judges in accordance with Article 18(3) a technically qualified judge with qualifications and experience in the field of technology concerned.
(b) refer the counterclaim for revocation for decision to the central division and suspend or proceed with the action for infringement; or
(c) with the agreement of the parties, refer the case for decision to the central division.
4. Actions referred to in Article 32(1)(b) and (d) shall be brought before the central division. If, however, an action for infringement as referred to in Article 32(1)(a) between the same parties relating to the same patent has been brought before a local or a regional division, these actions may only be brought before the same local or regional division.
5. If an action for revocation as referred to in Article 32(1)(d) is pending before the central division, an action for infringement as referred to in Article 32(1)(a) between the same parties relating to the same patent may be brought before any division in accordance with paragraph 1 of this Article or before the central division. The local or regional division concerned shall have the discretion to proceed in accordance with paragraph 3 of this Article.
6. An action for declaration of non-infringement as referred to in Article 32(1)(b) pending before the central division shall be stayed once an infringement action as referred to in Article 32(1)(a) between the same parties or between the holder of an exclusive licence and the party requesting a declaration of non-infringement relating to the same patent is brought before a local or regional division within three months of the date on which the action was initiated before the central division.
7. Parties may agree to bring actions referred to in Article 32(1)(a) to (h) before the division of their choice, including the central division.
8. Actions referred to in Article 32(1)(d) and (e) can be brought without the applicant having to file notice of opposition with the European Patent Office.
9. Actions referred to in Article 32(1)(i) shall be brought before the central division.
10. A party shall inform the Court of any pending revocation, limitation or opposition proceedings before the European Patent Office, and of any request for accelerated processing before the European Patent Office. The Court may stay its proceedings when a rapid decision may be expected from the European Patent Office.
1. Substantiated allegation (“schlüssiger Vortrag”) sufficient for establishing jurisdiction
In UPC_CFI_292/2023 (SES-imgotag SA v. Hanshow Technology et al., order of 20 December 2023), the Local Division Munich found that the acts of infringement alleged in the application of 4 September 2023 established the jurisdiction of the Munich Local Division of the UPC. In this context, the question of jurisdiction does not depend on whether the allegation – if substantiated – is ultimately found by the Court to constitute a patent infringement. The legal assessment of whether an act committed in Germany constitutes a patent infringement is not part of the jurisdictional analysis; for this purpose, a substantiated allegation (“schlüssiger Vortrag”) is sufficient.
2. Parallel actions before the Unified Patent Court – "Same parties" in the sense of Art. 33 (4)
Article 33 (4) UPCA governs the coordination of actions brought before different divisions of the Court when they involve the same patent and the same parties. In UPC_CFI_255/2023 (Edwards Lifescience vs. Meril Italy, order of 13 November 2023) the Central Division Paris addressed the interpretation of the term “same parties” within the meaning of this provision. The Central Division rejected this broad interpretation. It clarified that the UPCA does not define the term “party”, and therefore looked to national law – in this case, Italian law – to determine party identity. Under Italian legal principles, even close corporate and operational links between entities do not merge their legal personalities.
The Central Division also refused to apply the broader understanding of party identity developed under Art. 29 Brussels I Recast and CJEU case law, noting that the purpose of that framework (namely avoiding conflicting decisions across jurisdictions) differs from that of Art. 33(4), which is focused on internal coordination within the UPC system. Thus, the UPCA is to be interpreted autonomously, and not by analogy to EU procedural law developed for inter-state disputes.
The argument that Meril Italy was merely a "strawman" for Meril India was equally unsuccessful. The Central Division found no convincing evidence of abuse of process and referred by analogy to the approach of the EPO’s Enlarged Board of Appeal, which accepts oppositions filed by third parties unless an abuse is proven.
This order confirms a narrow and formal interpretation of “same parties” under Art. 33(4) UPCA, based on national corporate law and the autonomy of the UPC’s procedural framework. It allows parties affiliated with a defendant in an infringement action to initiate revocation proceedings at the Central Division, provided they are legally distinct entities. At the same time, the ruling leaves open the possibility to challenge such actions where genuine abuse of process can be demonstrated, notably by showing that the revocation claimant is a mere strawman. This interpretation aligns with German case law on comparable issues (see BGH, X ZR 36/11, marg. 7–8).
In the decision UPC_CoA_464/2024 et al of the Court of Appeal issued on 25.11.2025, it is stated in Headnote 1.:
The concept of the “same parties” of Art. 33(4) UPCA must be understood as requiring the parties to be identical. There may be such a degree of identity between the interests of two legal entities that a judgment delivered against one of them would have the force of res judicata as against the other. In such a situation, the entities must be considered to be one and the same party for the purposes of the application of Art. 33(4) second sentence UPCA.
3. Parallel actions before the UPC and the EPO and stay of proceedings (Art. 33 (10) UPCA)
In UPC_CFI_80/2023 (Astellas v. Helios et al., order of 20 November 2023), the Central Division in Munich found that the Court has discretion to stay proceedings awaiting any relevant decision from the EPO, provided such decision is expected rapidly. There should be a concrete expectation (i.e. a known date in time) for a decision which date should be in the near future such that it is clearly expected to be delivered before an expected decision by the UPC. In exercising Court’s discretionary power on the basis of Article 33(10) UPCA in connection with Rule 295 sub a RoP, the Court has to assess the relevant facts and circumstances and has to take into account the interests of both parties. Where the interests of the parties do not align, the Court has to weigh up the interests upon deciding a request to stay proceedings. In the view of the Court it was doubtful whether a decision that - at the time of issuing the present order - is expected in just over three months with notification of the decision and the grounds expected some months thereafter can be considered as a “rapid decision” for the purposes of Art. 33 (10) UPCA. The court took into account the likelihood of an appeal after the EPO decision, noting the absence of an “undertaking” by the Defendants not to appeal.
In UPC_CFI_198/2024 (Aylo Premium v. DISH Technologies, decision of 28 May 2025), the Central Division in Paris commented on the situation for the time period after the oral hearing and before the decision and found that Claimant's interest in obtaining a timely judgment and the interest in conducting proceedings which can be terminated in approximately one year outbalance Defendant's interests. The reasons given by the Court to decline a stay prior to the oral hearing, in particular the advanced stage of the proceedings, applied even more and a fortiori after the oral hearing.
In case UPC_CFI_414/2024 issued on 05.09.2025 by the LD Mannheim (Centripetal v. Keysight) the proceedings before the UPC were well advanced with the oral hearing being scheduled for 9/10 October 2025. The Defendant applied to have the proceedings stayed in the light of a preliminary opinion rendered by the EPO in opposition proceedings against the patent-in-suit the oral hearing being scheduled for 27 November 2025. Defendant is of the opinion that the revocation of the patent in suit were highly likely as according to the preliminary opinion suffered from added matter.
Despite the short time difference of only some weeks between the aforementioned oral proceedings the Court exercised its discretion so as to reject the Defendant’s application to stay the infringement and counter revocation proceedings with the following arguments:
“The case is ripe for a full-fledged hearing on 9/10 October 2025 including the validity of the patent. The reasoned decision of the Opposition Division may only be available a considerable time thereafter. Moreover, it remains open, what the consequences of the added matter as found on a preliminary basis by the EPO will be for the patent-in-suit and even if confirmed after the hearing, the patent-in-suit may still be upheld in a restricted form and it remains unclear what the consequences for the infringement reading of the case at hand would be. Therefore, it appears to be preferable for the UPC to continue the proceedings as it is also in the interest of justice in general to avoid conflicting decisions. The decision of the UPC, which will be handed down approximately six weeks after the hearing in October at the latest and therefore before the hearing at the EPO, will have bearing on the case before the EPO. Furthermore, it appears preferable to decide on both aspects, infringement and validity as planned after the hearing in October as the case is ripe for decision.”
Concerning the admissibility of an action for annulment in addition to the counterclaim for annulment already brought by an affiliated company the CD Paris decided in its Order UPC_CFI_999/2025 issued on 26.01.2026 (ALD France vs. Nanoval) as follows:
1. For the existence of an independent interest in an action for annulment in addition to the counterclaim for annulment already brought by an affiliated company, the plaintiff's own business activity is decisive. The degree of connection between the companies concerned is irrelevant. Affiliated companies are not automatically "the same party" within the meaning of Article 33(4) sentence 2 UPCA if they are parent and subsidiary companies.Nor is the degree of control a decisive criterion, provided that the company concerned carries out independent business activities.
2. The examination of the uniformity of the undertaking in the context of an antitrust action has different requirements and must take other interests into account, so that the principles developed there are not transferable.
Ad) the competence of a Local Division the LD Mannheim stated in its Procedural Order UPC_CFI_575/2025 issued 0n 12.02.2026 (Honeywell vs. Sovex, Solvest, Hemtech) :
As ruled by the Court of Appeal, competence of the divisions of the Court of First Instance, regulated in Art. 33 UPCA, is a UPC internal matter. Internal competence is not governed by the Brussels I Recast Regulation. For the purpose of establishing the competence of a local division, there is no hierarchy between competence based on the place where the actual or threatened infringement has occurred or may occur in Art. 33(1)(a) UPCA, and competence based on the residence or principal place of business of the defendant in Art. 33(1)(b) UPCA. There is no need to look for connecting factors in the territory of the local division seized in relation to each defendant to establish competence. To determine competence under Art. 33(1)(a) UPCA, the existence of infringing activities, for example an offer or the possibility to obtain the allegedly infringing devices through a website accessible in the Contracting Member State hosting the local division, needs to be established. The establishment of whether a first instance division is competent should not be based on a comprehensive evaluation of the evidence in relation to disputed facts that are relevant both to the question of competence and to the existence of the claim, since such an assessment would improperly anticipate the outcome. Rather, the Court will take a cursory look at the parties' allegations and evidence as provided, if any (CoA 28 November 2025, UPC_CoA_317/2025, UPC CoA376/2025, Barco – Yealink, headnotes 3-5). 16. As stated in a former order of 22 October 2025, in the Statement of Claim, the Claimant has sufficiently asserted that infringement has occurred or may occur in - inter alia - Germany. For example, it has stated that the website where the allegedly infringing products are offered is directed at the whole of Europe, so also Germany and that in a brochure in which the products are offered clients from across Europe and in particular Germany are named. Whether or not the alleged acts amount to an actual or threatened infringement in Germany by (each of) the Defendants, is to be decided in the case on the merits (CoA 3 September 2024, UPC_CoA_188/2024, Aylo v Dish, para 18).
Central Division as an additional forum under the domicile criterion
Competence of the Central Division for defendants established outside the territory of the Contracting Member States
The third subparagraph of Art. 33(1) UPCA does not constitute an exception to the competence of the local and regional divisions under Art. 33(1)(a) and (b) UPCA. Rather, it provides an additional basis of internal competence for actions against defendants domiciled or established outside the territory of the Contracting Member States.
Where a defendant is domiciled or established outside the territory of the Contracting Member States, the Central Division takes the place which a local or regional division would occupy under the defendant-domicile criterion if that defendant were established in a Contracting Member State. In this respect, the position is comparable to the fourth subparagraph of Art. 33(1) UPCA, under which the Central Division is competent where a defendant is domiciled in a Contracting Member State which has no local division and does not participate in a regional division.
In multi-defendant actions, the mechanism of Art. 33(1)(b) UPCA also applies where one or more defendants are domiciled or established outside the territory of the Contracting Member States. Accordingly, the Central Division may be competent for the action against all defendants by reference to a defendant established outside that territory, provided that the defendants have a commercial relationship and the action relates to the same alleged infringement. This interpretation serves to avoid parallel proceedings before different divisions and the resulting risk of contradictory decisions (UPC_CoA_4/2026 and UPC_CoA_13/2026, Court of Appeal, Valeo v Bosch, order of 22 June 2026).
4. “Same infringement” under Article 33.1 (b) UPCA
In a preliminary objection under Rule 19 RoP in case UPC_CFI_1963/2025, order of 17 February 2026, the Paris Local Division rejected an attempt by several Bosch entities to narrow the meaning of “the same alleged infringement” in Art. 33.1(b) UPCA.
The defendants argued that the provision requires identity of accused products across all defendants. Because different entities were allegedly involved in different product variants and distribution channels, they claimed the condition was not met.
The Court disagreed. “Same alleged infringement” refers to the alleged infringement of the same patent – not to identical products, identical supply chains, or identical territorial conduct.
It is sufficient that all defendants are accused of infringing the same patent and have a commercial relationship, for instance through group structures and related commercial activities.
This broad understanding was confirmed by the Court of Appeal in UPC_CoA_4/2026 and UPC_CoA_13/2026 (Court of Appeal, Valeo v Bosch, order of 22 June 2026). The requirement of the same alleged infringement may be fulfilled even where individual defendants are accused of infringing in relation to different products or in different Contracting Member States. It is sufficient that the allegations concern infringement of the same patent by related products, provided that the further requirement of a commercial relationship between the defendants is met.
Decisions of the Court shall cover, in the case of a European patent, the territory of those Contracting Member States for which the European patent has effect.
In UPC_CFI_163/2024 – Decision of 23 May 2025, the Paris Local Division clarified the distinction between jurisdiction (Articles 31–33 UPCA) and the territorial scope of decisions (Art. 34 UPCA). It held that objections based on Art. 34 UPCA are not preliminary objections under Rule 19 RoP and are therefore admissible even if raised later in the proceedings.
On the merits, the Court confirmed that the UPC has jurisdiction over such claims in line with the CJEU’s decision in BSH v. Electrolux and previous UPC rulings (e.g. UPC_CFI_355/2023, UPC_CFI_702/2024, UPC_CFI_792/2024).
In UPC_CFI_198/2024 (Aylo Premium v. DISH Technologies, decision of 28 May 2025), the Central Division in Paris explained that as a general rule, according to Art. 34 UPCA, decisions of the Court shall cover, in the case of a European patent, the territory of those Contracting Member States for which the European patent has effect. This provision defines the possible scope of UPC judgments but does not restrain the possibility to limit the revocation of European patents to certain UPC Member States.
In its Decision UPC-CoA-880/2025 issued on 02.06.2026 (Kodak v. Fujifilm) the Court of Appeal summarized UPC’s international competence as follows:
1. Art. 34 UPCA states that “Decisions of the Court shall cover, in the case of a European patent, the territory of those Contracting Member States for which the European patent has effect”. It is not meant to confine the UPC’s jurisdiction to its own territory. Art. 34 UPCA clarifies that as a rule – unless a more limited scope is requested (cf Art. 43, 76 UPCA) – decisions of the UPC shall cover the territory of all Contracting Member States where a European patent has effect.
2. There is no indication that the Contracting Member States when entering into the UPCA wished to confer a more limited jurisdiction to the UPC – confined to its own territory – in situations where the national courts would have extra-territorial jurisdiction.
3. The UPCA is expressly not limited to European patents insofar as validated for the UPC territory only. As such, European patents validated in territories outside the UPC territory is ‘matter governed by the UPCA’.
4. Art. 24(3) UPCA specifically leaves open the possibility that there is a need for the UPCA to apply national law, including that of non-contracting States. The use of ‘in particular’ makes clear that the areas of application of such foreign law is not limited to the matters referred to in the articles mentioned.
5. Where a court has jurisdiction under Article 4 Br I bis because the defendant is domiciled in its territory, as is the case in the present proceedings, the Regulation precludes that court from declining jurisdiction on the ground that a court of a non-Member State would be a more appropriate forum for the trial of the action, even if the jurisdiction of no other Member State is in issue, or the proceedings have no connecting factors to any other Member State (CJEU, judgment of 1 March 2005, Owusu, C-281/02, ECLI:EU:C:2005:120, paras 36 ‒ 46). This approach has recently been endorsed by the CJEU in BSH v Electrolux.
6. Accepting jurisdiction in the infringement action vis-à-vis a defendant domiciled in the UPC’s territory based on Art. 4 Br I bis as such cannot be considered contrary to the TRIPS Agreement. Exercising international jurisdiction
Exercising international jurisdiction
7. A court which has jurisdiction to hear an alleged infringement of a patent validated outside of its own territory, is not only required to apply the law applicable to that patent but must also apply international law principles such as comity.
8. In situations where the Court has jurisdiction to decide on the alleged infringement and remedies requested by the patentee based on a non-UPC designation of a European patent (EP), and where the defendant has – as a defence – asserted that the EP relied on is invalid, then:
9. The Court of Appeal considers the following approach regarding actions based on EU/LC European patents and/or non-EU/LC European patents to be in line with BSH v Electrolux and international principles of law, including comity, for the following situations (I, II and III respectively):
I. when a revocation action is lodged with the Court with respect to (a) EU/LC EP(s) and/or non-EU/LC EP(s)
10. The Court shall declare that it lacks jurisdiction to decide the action.
II. in an infringement action which is also based on (a) EU/LC EP(s) and/or non-EU/LC EP(s), and the patent in force in the UPC territory is considered invalid, but the attacked embodiment or process would infringe if it were valid
11. It will be appropriate for the Court to first offer the patentee the opportunity to withdraw the infringement action insofar as based on (a) EU/LC EP(s) and/or non-EU/LC EP(s) within an appropriate period of time.
12. Where it concerns EU/LC EPs:
a. if the patentee does not wish to withdraw the infringement action, and insofar a revocation action is not already pending with the relevant competent national court(s), it is appropriate to give the defendant the opportunity to file a revocation action with the relevant competent national court(s) within an appropriate period of time.
b. if and to the extent that (a) revocation action(s) is pending, or the defendant has lodged such action(s), it is generally appropriate for the Court to use its discretion and/or case management powers (cf R. 295(l) and (m) RoP) to stay the infringement proceedings insofar as based on that EU/LC EP(s) until a final decision has been rendered in the revocation action(s) by the competent national court(s).
c. if and to the extent that the defendant does not lodge such action(s) within the given time period, the Court must assume that the patent(s) is/are valid and shall decide the infringement action on that basis.
13. Where it concerns non-EU/LC Eps:
a. if the patentee does not wish to withdraw the infringement action, the infringement action shall be dismissed, unless there are specific reasons not to do so (e.g. because the claim(s) of an extra-territorial part is different and may be considered valid – in such a situation the next paragraph applies)
III. in an infringement action which is also based on (a) EU/LC EP(s) and/or non-EU/LC EP(s), and the patent in force in the UPC territory is considered valid and infringed in the UPC territory
14. Where it concerns either EU/LC EPs (in view of Art. 24(4) Br I bis and 22(4) LC) or non-EU/LC EPs (in view of comity):
a. the Court may – where appropriate and in order to avoid undue delay – consider there is a reasonable, non-negligible possibility that the patent will be held valid by the competent national court and issue a decision including its orders under the condition subsequent that the patent is not held to be wholly or partially invalid to the extent the infringement is based thereon in first instance or appeal proceedings before the national court competent to hear the revocation case in relation to such an EP (R. 118.2 RoP and Solvay v Honeywell (C-616/10) mutatis mutandis).
b. if such a competent national court holds the patent to be valid, then the decision including its orders stays in place with the condition subsequent; if the decision is final, the injunction becomes permanent.
c. if such a competent national court at first instance or on appeal holds the patent to be wholly or partially invalid to the extent the infringement is based thereon then the condition under which the decision, including its orders, was issued is not fulfilled and it falls away.
d. In the case under c. the patentee may request the Court for orders consequential on such a decision within two months of the decision of such a competent national court (R. 118.4 RoP), including a request for a stay of the proceedings until a final decision is rendered by the competent national court.
The Patent Mediation and Arbitration Center (PMAC) is established by Art. 35.1 UPCA. It is located in Ljubljana, Slovenia, and Lisbon, Portugal. It is an integral part of the UPCA and is expected to start its work in 2026.
PMAC is a service for mediation and arbitration in all patent related disputes under the UPC, except decisions to revoke or limit a patent in mediation or arbitration proceedings (Art. 35.2 UPCA).
Related Rules
In mediation procedures, this directive on certain aspects in mediation on civil and commercial matters established to facilitate the amicable resolution of disputes provides basic rules. This directive applies according to Art. 2.1 to cross-border disputes in which at least one of the parties is domiciled or habitually resident in a Member State other than that of any other party. A cross-border dispute shall also be one in which judicial proceedings or arbitration following mediation between the parties are initiated in a Member State other than that in which the parties were domiciled or habitually resident (Art. 2.2). According to Art. 8 of EU directive 2008/52/EC, the parties shall not subsequently be prevented from initiating judicial proceedings.
The parties must have the right to seek a judicial judgement by a court. This is a general principle to be considered in contractual mediation and arbitration clauses and in agreements between the parties in the attempt to amicably settle the UPC dispute by aid of mediation or arbitration.
In CJEU Judgement of 14/06/2017 - C-75/16, ECLI:EU:C:2017:457, paras. 51, 54 + 56 it is stated “what is important is not whether the mediation system is mandatory or optional, but the fact that the parties’ right of access to the judicial system is maintained”. [...] “Nevertheless, it is settled case-law of the Court that fundamental rights do not constitute unfettered prerogatives and may be restricted, provided that the restrictions in fact correspond to objectives of general interest pursued by the measure in question and that they do not involve, with regard to the objectives pursued, a disproportionate and intolerable interference which infringes upon the very substance of the rights guaranteed (CJEU Judgment of 18 March 2010, Alassini and Others, C‑317/08 to C‑320/08, EU:C:2010:146, para. 63 and the case-law cited).” [...] “Member States are free to choose the means they deem appropriate for the purposes of ensuring that access to the judicial system is not hindered. The fact, first, that the outcome of the ADR procedure is not binding on the parties and, secondly, the fact that the limitation periods do not expire during such a procedure are two means which, amongst others, would be appropriate for the purposes of achieving that objective.“
B) Rules of Operation of the PMAC (PMAC RoO)
The Administrative Commitee of the UPC established the Rules of Operation of the PMAC on 08/07/2022. This provides the organizational structure of the PMAC and general rules for the venue of mediation and arbitration (R. 4 PMAC RoO) and for the list of arbitrators and mediators (R. 14 PMAC RoO).
C) PMAC Rules of Procedure
PMAC shall establish Mediation and Arbitration Rules according to Art. 35 (3) UPCA and criteria and qualifications for arbitrators and mediators to be admitted to the list which have to be accepted by the administrative committee (R. 14.2 PMAC RoO). Draft PMAC rules have been published on 13/05/2025 for commentary.
Mediation Procedure
Mediation is an attempt to settle a dispute with guidance (mediation) of a mediator (see also R. 11.1 RoP). According to R. 11.1 RoP, the deadlines are suspended when mediation is initiated.
PMAC is, according to Art. 2 (5) PMAC Mediation Rules (PMAC RoM), the only body authorized to administer the mediation proceedings under the Mediation Rules of PMAC. PMAC is established under Art. 35 UPCA for mediation and arbitration of patent disputes falling within the scope of the UPCA. However, this does not exclude mediation or arbitration by other bodies, e.g. WIPO Arbitration and Mediation Center.
Language of Mediation
The language of the Mediation is agreed by the parties, or, in the absence of an agreement, shall be the language which PMAC considers is most closely related to the dispute (Art. 14 PMAC RoM).
The language of the mediation procedure can be different to the working languages of the Centre, which shall be English, French and German (Art. 6.1 PMAC RoO).
Length of Mediation procedure
Art. 15.4 PMAC RoM intends efficient Mediation within three months starting from the appointment of the Mediator. However, this period may be extended by the Centre with the agreement of the Mediator and all the parties. Disagreement of a party allows the party to step out of unsuccessful mediation and proceed with the UPC procedure. The maximum duration is limited in that PMAC may terminate the Proceedings on the expiry of a period of 12 months from the date of appointment of the Mediator, following consultation with the Mediator and the parties. This is a ground for termination according to Art. 17 .1 lit. b) PMAC RoM. The Mediator and the parties shall make all effort to reach an expeditious and efficient resolution of the dispute. They can agree on a meeting agenda and a time schedule.
Initiation or Continuation of parallel Proceedings in Mediation
Art. 21.3 PMAC RoM expects from the parties to expressly undertake not to initiate or actively continue any judicial, arbitral or similar proceedings to a dispute which is subject to the pending Proceedings at PMAC. This allows the parties to negotiate a settlement without pressure by injunction claims or invalidations or restrictions of the patent in dispute. However, suspension of parallel procedure is not mandatory. According to Art. 21.4 PMAC RoM, initiation or continuation of such parallel proceedings does not in itself constitute a waiver of the Mediation Agreement or a declaration of termination of the Mediation Proceedings.
In FRAND procedures, Art. 25 PMAC RoM allows continued parallel proceedings. In case only parts of a dispute are referred to Mediation, the parties may agree that any undertaking made under Article 20 PMAC RoM does not apply, and Proceedings concerning other parts of the dispute that are not subject to the pending Mediation at the Centre can continue. This may cause the defendant to accept a mediation agreement under pressure. The threat of an injunction may cause the implementer to raise royalties for a SEP portfolio including alleged SEPs that are, in reality, invalid, not essential, or not infringed. [R. Nazzini: Global licences under threat of injunctions: FRAND commitments, competition law, and jurisdictional battles, in: Journal of Antitrust Enforcement, 2023, 11, 427–453, 443 - https://doi.org/10.1093/jaenfo/jnad002]
Mediation in FRAND Disputes
Section 5 of PMAC RoM is directed to FRAND disputes, which are related to Standard Essential Patents (SEP), in particular an international SEP portfolio comprising more patents than the unitary patent in a UPC dispute, and which are linked to patent and antitrust law. A core dispute is the question of Fair Reasonable and Non-Discriminatory licence offer of the SEP owner and willingness of defendant to take a FRAND licence.
Thus, mediation is not limited to the unitary patent in dispute and directly related disputes. According to Art. 22 (2) PMAC RoM, the matters raised in mediation may include:
a) the SEP(s) in dispute or other patents concerned, such as one or several or a sample of patent(s) from the patent portfolio(s), in which case the parties may agree on the sampling criteria;
b) any patents that might be subject to cross-licensing;
c) the claims and defenses;
d) the conduct of the Proceedings in multiple stages;
e) any essentiality assessment to be conducted in accordance with the Centre’s rules on expert determination;
f) the determination of selected licensing terms and conditions;
g) the determination on a temporary basis of any selected licensing terms pending determination of final licensing terms by a competent tribunal;
h) the determination of the scope of the royalty base and range;
i) the methodology for calculating a FRAND royalty rate;
j) any application for an order to a competent court, such as an application for an order to produce evidence or an order concerning confidentiality.
Arbitration Procedure
Arbitration is a procedure resulting in a decision of the board of arbitrators.
In CJEU, Judgement of 20/06/2022 - C-700/20, ECLI:EU:C:2022:488, para. 58, it is stated that “an arbitral award can, by means of a judgment entered in the terms of that award, produce effects in the context of Article 34.3 of Regulation No 44/2001 only if this does not infringe the right to an effective remedy guaranteed in Article 47 of the Charter of Fundamental Rights of the European Union (see, to that effect, CJEU judgment of 25 May 2016, Meroni, C‑559/14, EU:C:2016:349, para. 44) and enables the objectives of the free movement of judgments in civil matters and of mutual trust in the administration of justice in the European Union to be achieved under conditions at least as favourable as those resulting from the application of Regulation No 44/2001 (see, by analogy, CJEU judgments of 4 May 2010, TNT Express Nederland, C‑533/08, EU:C:2010:243, para. 55, and of 19 December 2013, Nipponka Insurance, C‑452/12, EU:C:2013:858, para. 38).” The advocate general stated in his opinion of 16. January 2025 in CJEU case C-600/23, ECLI:EU:C:2025:24, para. 136 that “Article 19.1 TEU, read in conjunction with Article 267 TFEU and Article 47 of the Charter, does not preclude a rule of national law granting an arbitral award rebuttable probative value vis-à-vis third parties, where the review of conformity with EU law has been carried out by a court of a third country”.
In the UPC procedure, the arbitration decision provided in the interim procedure to explore the possibility of a settlement (Art. 52.2 UPCA) is not finally binding. The parties can proceed with the court procedure in case a party does not agree with the outcome. Therefore, a review of conformity with EU law by EU courts is guaranteed.
Judicial enforcement of a mediation settlement and an arbitral award
The terms of any settlement or arbitral award by consent, reached using the facilities of PMAC, shall be confirmed by the UPC by decision (R. 11.2 RoP). This includes a term which obliges the patent owner to limit, surrender or agree to the revocation of a patent or not to assert it against the other party and/or third parties. A request for decision by the parties is required (R. 365.2 RoP). Art. 2.2 PMAC Mediation Rules reflects the rules set out in R. 11.2 and R. 365 RoP.
The UPC decision confirming the settlement can be enforced according to Art. 82 UPCA in any Contracting Member State. An order for the enforcement of a decision shall be appended to the decision by the Court.
The EU Regulation on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (Brussel 1 bis EU Regulation No 1215/2012 of 12 December 2012) does not apply to arbitration according to Art. 1.2 d) Brussels 1 bis EU Regulation. However, the UPC decision confirming the settlement is a judgment given by a court or tribunal of a Member State in the meaning of Art. 2 a) of the Brussels 1 bis EU Regulation. The decision shall be enforceable in any Contracting Member State according to Art. 82.1 UPCA and can be enforced without any declaration of enforceability being required (Art. 39 Brussels 1 bis EU Regulation).
The training framework for judges shall be financed by the budget of the Court.
The operating costs of the Centre shall be financed by the budget of the Court.
The Court shall actively manage the cases before it in accordance with the Rules of Procedure without impairing the freedom of the parties to determine the subject-matter of, and the supporting evidence for, their case.
Acc. to the LD Milan (order of 2 June 2025) the Court must grant a stay of proceedings if requested by all parties involved.
On a corresponding request by all parties a stay of proceedings can also be limited to certain patents in case that more than one patent is being litigated (Rule 295 (d) RoP). A pending EPO opposition or amendment proceedings would be a proper reason for such a joint request.
Concerning the subject matter of the proceedings the following has to be considered according to the decision UPC_CFI_248/2024 of the LD Munich issued on 22.08.2025 (Brita v. Aquashield et al):
According to Article 43 of the UPCA, the parties determine the subject matter of the proceedings. In the case of an infringement action, the subject matter of the dispute is determined by the plaintiff by means of the claims set out in the statement of claim and the facts presented in support of those claims (Rule 13(1)(g), (k), (l) and (n) of the RoP). The (actual) facts of the case presented by the claimant, together with the claim, specify the desired legal consequences. Accordingly, the facts from which the defendant's actions are to be inferred, which are or are to be qualified as an infringement of the patent in dispute, are relevant for determining the subject matter of a patent infringement action (Rule 13(1)(l) RoP).
These facts typically include, first and foremost, the actual design of a specific product or process referred to as the contested embodiment with regard to the features of the asserted patent. These facts typically include first and foremost the actual design of a specific product or process referred to as the contested embodiment with regard to the features of the asserted patent claim.
Even if the mention of a product name, order number, model name or similar may contribute to the identification of an infringing embodiment, which is why it is generally advisable to reproduce these in a statement of claim, the designation, name or number alone does not determine the infringing embodiment. As explained above, what is decisive is the actual design of the contested product in relation to the features of the patent in dispute. It is therefore necessary to present the facts in this respect. A different actual design of a product that is relevant in view of the features of the patent in dispute therefore leads to different embodiments. This is the case even if the different designs are manufactured, offered and/or distributed under the same designation.
The distinction between the facts defining the contested embodiment and their legal qualification as patent infringement is also relevant where the defendant does not timely contest the claimant's factual case. Uncontested facts concerning the design or functioning of the contested embodiment may be treated as established. However, the Court must still assess whether those facts, applying the proper construction of the patent claim, justify the legal consequence of infringement (Court of Appeal, UPC_CoA_36/2026, order of 8 July 2026, Align Technology v. Angelalign Technology).
The Court shall make best use of electronic procedures, such as the electronic filing of submissions of the parties and stating of evidence in electronic form, as well as video conferencing, in accordance with the Rules of Procedure.
The proceedings shall be open to the public unless the Court decides to make them confidential, to the extent necessary, in the interest of one of the parties or other affected persons, or in the general interest of justice or public order.
Any natural or legal person, or any body equivalent to a legal person entitled to initiate proceedings in accordance with its national law, shall have the capacity to be a party to the proceedings before the Court.
Intervening party
The patent owner has the right to intervene in a dispute of the licensee of the patent in suit (Art. 47.4 UPCA). Further, Art. 47.6 UPCA grants the right to anybody entitled to bring actions in accordance with its national law, who is concerned by a patent, to bring actions in accordance with the RoP. This includes the intervention according to R. 313 to 317 RoP.
In UPC_CFI_440/2023 (Seoul Viosys Co. Ltd. vs. Laser Components and intervener Photon Wave Co. Ltd, LD Paris order on 24. July 2024), it was stated that the intervener, after its intervention has been declared admissible, must be "treated as a party" in the infringement action, in accordance with R. 315.4 RoP.
According to Art. 48 UPCA, parties shall be represented by European Patent Attorneys who are entitled to act as professional representatives before the European Patent Office and who have appropriate qualifications such as a European Patent Litigation Certificate or by lawyers authorised to practise before a court of a UPC Member State.
In UPC_CFI_195/2024 (Amycel LLC v. a redacted Polish producer), the defendant was represented by European patent attorneys from Poland, which is not a Contracting Member State of the UPCA, and who had the appropriate qualifications to represent before the UPC.
In UPC_CoA_405/2024 (Alexion v Amgen, order of 19 June 2025) the Court of Appeal stressed that party representatives before the UPC must be thoroughly familiar with, and able to deploy, the jurisprudence of the EPO’s Technical Boards of Appeal and the Enlarged Board of Appeal. This body of case law is part of the legal environment that a diligent European Patent Attorney or lawyer qualified under Art. 48 UPCA is expected to master; overlooking it cannot later be reframed as a breach of the right to be heard (Art. 76) or as a fundamental procedural defect (Art. 81).
In UPC_CoA_221/2025 et al. (NST v Qualcomm, order of 3 July 2025) the Court of Appeal reiterates that while parties remain free to select foreign or non UPC advisers, every additional individual who seeks access to protected material must be justified with a concrete need. A mere “trustful relationship” or historical involvement is insufficient; the applicant must show why existing UPC representatives, in-house staff and experts cannot fill the gap.
Case Context
In an order dated January 16, 2024 (Aarke AB v. SodaStream Industries, UPC_CFI_373/2023), the President of the Court of First Instance addressed an application for a change in the language of proceedings in a patent infringement case between Aarke AB and SodaStream Industries Ltd. Aarke AB, a Swedish company, requested a change in the language of proceedings from German to English, as per Rule 323 of the Rules of Procedure (RoP). The President of the Court of First Instance ruled in favour of Aarke AB, declaring the application admissible and granting the request to change the language of the proceedings to English. The decision was based on the principles of fairness, equity, and proportionality outlined in the RoP and the Unified Patent Court Agreement (UPCA). The Court emphasized the need to consider the position of SMEs in such proceedings and the aim of the UPCA to ensure fair access to justice for these entities. The ruling clarifies that requests for changing the language of proceedings can be made independently of the main pleadings and in a different language. The Court balanced the interests of both parties, ensuring that the language change to English did not unfairly disadvantage the larger, more resourceful party.
The above is confirmed by Order of the President of the Court of First Instance in proceedings before the LD Mannheim issued on 09 July 2025 in UPC_CFI_292/2025 (The Walt Disney Company et al. v. Interdigital VC) as follows:
“According to Art. 49(1) UPCA, the language of the proceedings before a local division must be an official language of its hosting Member State or alternately the other language designated pursuant to Art. 49 (2). It is further provided by R. 323 RoP that “If a party wishes to use the language in which the patent was granted as language of the proceedings, in accordance with Article 49(5) of the Agreement (…) [t]he President, having consulted [the other parties and] the panel of the division, may order that the language in which the patent was granted shall be the language of the proceedings and may make the order conditional on specific translation or interpretation arrangements”
In Order UPC_CFI_351/2025 of the President of the Court of First Instance of 16 July 2025 (Positec v. Husquarna) concerning the language of proceedings and a change of the language of proceedings it is stated:
By an order dated 17 April 2024, the UPC Court of Appeal (hereinafter “CoA”) ruled that when deciding on a request to change the language of the proceedings to the language of the patent for reasons of fairness, all relevant circumstances must be taken into account. These circumstances should primarily relate to the specific case, such as the language most commonly used in the relevant technology, and to the position of the parties, including their nationality, domicile, respective size, and how they could be affected by the requested change (UPC_CoA_101/2024, Apl_12116/2024, para. 22-25). It was furthermore stated that the internal working language of the parties, the possibility of internal coordination and of support on technical issues are relevant circumstances, while other proceedings pending before a national court, which do not relate to the dispute, are in themselves of less relevance (UPC_CoA_354/2024, Apl 38948/2024, Order dated 18 September 2024, para. 26-27). In the event that the result of the balancing of interests is the same in the context of this overall assessment, the CoA found that the emphasis placed “in particular” on the position of the defendant under Art. 49 (5) UPCA is justified by the flexibility afforded to the claimant which frequently has the choice of where to file its action – since any local or regional division in which an infringement is threatened or taking place is competent – and can generally choose the most convenient timeframe to draft its Statement of Claim, while the defendant is directly bound by strict deadlines. The position of the defendant (s) is consequently the decisive factor if both parties are in a comparable situation. In the same decision, the CoA also held that “for a claimant, having had the choice of language of the patent, with the ensuing possibility that the claimant/patentee may have to conduct legal proceedings in that language, as a general rule and absent specific relevant circumstances pointing in another direction, the language of the patent as the language of the proceedings cannot be considered to be unfair in respect of the claimant” (para. 34).
In this case, the German subsidiary of a Chinese parent company was sued by a Swedish company in German before a German Local Division, namely the LD Düsseldorf. The German subsidiary requested that the language of the proceedings be changed from German to English because this were the internal working language of the group of companies by which legal and technical departments were expected to provide support in preparing their defence on the alleged infringement and further, German is not an official language in Sweden either. This request was granted, even though the German subsidiary offered and sold all of its products in Germany, including the alleged infringing products, in German. Among others, a further decisive factor for this decision was that as a matter of principle the interest of the Defendant is always particularly important, as the Defendant initially has no choice regarding the language of the proceedings before a Local Division.
1. Any panel of the Court of First Instance and the Court of Appeal may, to the extent deemed appropriate, dispense with translation requirements.
2. At the request of one of the parties, and to the extent deemed appropriate, any division of the Court of First Instance and the Court of Appeal shall provide interpretation facilities to assist the parties concerned at oral proceedings.
3. Notwithstanding Article 49(6), in cases where an action for infringement is brought before the central division, a defendant having its residence, principal place of business or place of business in a Member State shall have the right to obtain, upon request, translations of relevant documents in the language of the Member State of residence, principal place of business or, in the absence of residence or principal place of business, place of business, in the following circumstances:
(a) jurisdiction is entrusted to the central division in accordance with Article 33(1) third or fourth subparagraph, and
(b) the language of proceedings at the central division is a language which is not an official language of the Member State where the defendant has its residence, principal place of business or, in the absence of residence or principal place of business, place of business, and
(c) the defendant does not have proper knowledge of the language of the proceedings.
1. In proceedings before the Court, the means of giving or obtaining evidence shall include in particular the following:
(a) hearing the parties;
(b) requests for information;
(c) production of documents;
(d) hearing witnesses;
(e) opinions by experts;
(f) inspection;
(g) comparative tests or experiments;
(h) sworn statements in writing (affidavits).
2. The Rules of Procedure shall govern the procedure for taking such evidence. Questioning of witnesses and experts shall be under the control of the Court and be limited to what is necessary.
Without prejudice to Article 24(2) and (3), the burden of the proof of facts shall be on the party relying on those facts.
To protect the trade secrets, personal data or other confidential information of a party to the proceedings or of a third party, or to prevent an abuse of evidence, the Court may order that the collection and use of evidence in proceedings before it be restricted or prohibited or that access to such evidence be restricted to specific persons.
Concerning the protection of confidential information the LD Düsseldorf stated in its Order UPC_CFI_1035/2025 issued on 11.05.2026 (Yangtze Memory v Micron):
Pursuant to Art. 58 UPCA, to protect the trade secrets, personal data or other confidential information of a party to the proceedings of a third party, or to prevent an abuse of evidence, the Court may order that the collection and use of evidence in proceedings before it be restricted or prohibited or that access to such access to such evidence be restricted to specific persons (underlining added by the Court).
In accordance with R. 262A RoP, a party may make an Application to the Court for an order that certain information contained in its pleadings or the collection and use of evidence in proceedings may be restricted or prohibited or that access to such information or evidence be restricted to specific persons.
Consequently, confidentiality orders are not limited to the protection of trade secrets. What is decisive is that the information in question is of a nature that requires it to be kept confidential. The extent to which a party has access to confidential information contained in submitted pleadings or evidence must be assessed in light of the circumstances of the case in question. When doing so, the interest of the parties involved in the proceedings must be weighed against each other. Particular consideration must be given the right to be heard and the right to the effective exercise of rights in a fair trial of the party affected by a possible restriction of access; and to the interest of the holder of the confidential information in protecting that information of the applicant (UPC_CFI_471/2023 (LD Mannheim), Order of 22 July 2024, p. 4 – DISH Technologies v. AYLO PREMIUM).
Based on these principles, the conditions for the R. 262A RoP-order to protect confidential information sought by the Claimant are met.
a) The formal requirements of R. 262A.2 and .3 RoP were complied with. The Defendants’ representatives were also heard before the confidentiality order was issued, as required by R. 262A.4 RoP. They made use of the opportunity to submit observations.
b) The Claimant has demonstrated why the information contained in the passages marked in grey in the “T….report” is confidential and requires protection. The Defendants were unable to substantially challenge this.
There is no indication that the “T…. report”, commissioned by the Claimant’s US counsel, is publicly available. Insofar as the Defendants refer to the Claimant’s remark that the report was “published on 21 June 2024,” the Claimant has clarified that this does not mean that the report was freely available from the date onwards. From that point in time, the content of the report could only be acquired by means of a licence. To obtain such a licence, T……. requires a contractual agreement to be concluded and a licence fee to be paid.
In light of the current status of the proceedings, it is reasonable to protect the Claimant against potential US export control restrictions and grant the requested confidentiality.
There is no need for a time-consuming further investigation into whether such restrictions exist and, if so, to what extent. The Claimant has sufficiently demonstrated that submitting the “T….. report” in these proceedings could violate US export control restrictions. The Claimant will be protected from this risk by the order to protect confidential information. This order will not disadvantage the Defendants to any extent that outweighs the Claimant’s interest in ensuring confidentiality. Therefore, the question raised by the Claimant regarding the basis for the protection of trade secrets under R. 288 RoP is not decisive. Even setting this aside, the conditions for a confidentiality order are met here.
In addition it is to be mentioned that there are no issues with excluding all natural persons on the Claimant’s side.
R. 262A.6 RoP explicitly states that the group of authorised persons must include at least one natural person from the concerned party. In other words, when seeking a confidentiality order, a party generally cannot require the other party to ensure that all of their natural persons are excluded from the confidentiality club (UPC_CoA_755/2025, Order of 26 January 2026, Headnote 2 and mn. 25 – Sun Patent v. Vivo; UPC_CFI_359/2023 (LD Mannheim), Or der of 21 March 2024 – Fujifilm v. Kodak; UPC_CFI_471/2023 (LD Mannheim), Order of 22 July 2024, p. 4 – DISH v. AYLO). 28. However, the parties may agree to waive the requirement for a natural person to be a member of the confidentiality club, as defined in R. 262A.6 RoP (UPC_CFI_169/2024 (LD Hamburg), Order of 24 October 2024, Headnote 3 – 10x Genomics v. Vizgen). In such circumstances, there is no obvious reason why the party against whom the confidentiality order is to be issued cannot waive this right independently (UPC_CFI_240/2023 (LD Milan), Order of 23 July 2024, p. 4 – Oerlikon v. Himson). This provision is intended to protect the addressee of the confidentiality order, who may waive this protection. There is no indication that R. 262A.6 RoP is a mandatory provision to the extent that the person it is intended to protect cannot waive this protection.
Whether a particular person should be granted full access to confidential information must be assessed in light of the circumstances of the individual case, including that person's role in the proceedings, the relevance of the confidential information to the performance of that role and the person's trustworthiness in maintaining confidentiality.
Where the confidential information consists of market data concerning the opposing party, access may appropriately be granted to employees engaged in marketing activities who are particularly suited to examine and verify that data. The degree of confidentiality of the information is also relevant when determining the appropriate composition of the confidentiality club. In the case at hand, access was granted to two marketing employees and two employees of the legal department, in addition to the UPC representatives and their internal assistants (Court of Appeal, UPC_CoA_61/2026, order of 22 May 2026 – SharkNinja v Groupe SEB; applying Court of Appeal, UPC_CoA_621/2024, order of 12 February 2025 – Daedalus v Xiaomi).
According to an order of the LD Munich (Nanoval v. ALD Vacuum, order of 28 May 2025), a protective letter only helps against an order to preserve evidence and inspect premises under Art. 60 UPCA without hearing the other party if it explains how the allegedly infringing object is designed and how it differs specifically from the object placed under patent protection.
The same applies to the response to a request for authorization. If this response only contains the assertion that the challenged subject matter differs fundamentally from the subject matter protected by the patent, without further details being provided as to how the allegedly patent-infringing subject matter differs specifically from the subject matter protected by the patent, the alleged patent infringer lacks the required willingness to cooperate. This is because, in the opinion of the local division, the patent infringer has shown with behaviour such as that described above that it does not wish to cooperate voluntarily in clarifying the facts of the case.
And based on this, it is not far-fetched to assume that once the alleged patent infringer has prior knowledge of the planned implementation of evidence preservation measures, it is no longer possible to fully preserve evidence. In this case, the patent proprietor would suffer irreparable damage within the meaning of Art. 60 (5) UPCA with the consequence that the measures to preserve evidence can also be decided without prior hearing of the alleged patent infringer.
Inspection Proceedings granted EX PARTE or NOT EX PARTE?
According to Art. 60 (5) UPCA measures, such as inspection proceedings, shall be ordered, if necessary, without the other party having heard, in particular where any delay is likely to cause irreparable harm to the proprietor of the patent, or where there is a demonstrable risk of evidence being destroyed.
Correspondingly, the following Orders are quite valuable examples for pro or contra EX PARTE:
EX PARTE ORDERS granted
As a matter of principle, the UPC allows ex parte orders in particular when waiting for a full inter partes procedure would make any remedy ineffective.
EX PARTE ORDERS not granted
Ex parte orders are refused when reasons are given for, such as:
Necessity and weighing of interests
An applicant for provisional measures must provide reasons why such measures are necessary, as well as the facts and evidence relied on in support of the Application, including evidence to support the claim that provisional measures are necessary (R. 206.2(c-d) RoP). This is not merely a formal requirement. The necessity of provisional measures concerns the merits of the application and must be assessed by the Court when deciding on the application under R. 211 RoP (Court of Appeal, UPC_CoA_901/2025, order of 17 April 2026 – Abbott v Sinocare/Menarini). The decision of the Court will depend on the exercise of its discretion weighing up the interests of the parties. Particular emphasis is placed upon the weighing of potential harm for either of the parties resulting from the granting or the refusal of the injunction (Art. 62(2) UPCA and R. 211.3 RoP).
When assessing the necessity of interests, the court should not only consider generic general factors but take into account the specific market situation at hand. For example, in UPC_CoA_523/2024 (Sumi Agro Europe Limited v. Syngenta Limited, order of 3 March 2025) the court of appeal ruled that a move from a market situation where only one ready-made product is available, to one where there are two such competing products, can be expected to lead not just to price pressure but to a permanent price erosion, as put forward by Syngenta (the Applicant). A price drop such as the one described can consequently be expected to prove detrimental, not just momentarily but long-run, for the profitability of Elumis, even if a permanent injunction would eventually be obtained after proceedings on the merits. Given these economic incentives, the prospect of a permanent injunction following proceedings on the merits cannot be expected to be sufficient to prevent the continuation of the infringement (R. 206.2(c) RoP). On the contrary, a provisional injunction is needed.
Furthermore, Art. 62(1) UPCA does not discriminate between different kind of infringing actions, which are to be preempted or stopped in their tracks. The term infringement is to be understood here in relation to Art. 25 UPCA, which confers on the patent proprietor the right to prevent not just the placing on the market of a product which is the subject-matter of the patent, but also acts of infringement which typically precede or supplement actual sales, namely making, offering, or importing or storing the infringing product for those purposes.
Urgency
Apart from the necessity, the court further reviews the factor of urgency, when deciding over the prospects of provisional measures. In this regard, it is essential that the applicant files essential documents in accordance with the urgency alleged.
According to UPC_CFI_463/2023 (LD Düsseldorf, order of 30 April 2024, 10x Genomics, Inc. v. Curio Bioscience Inc.), pursuant to Rule 213.2 RoP, the Court may, as part of its decision-making process, require the Applicant to submit all reasonably available evidence to ensure that it can be sufficiently certain that the Applicant is entitled to initiate proceedings under Art. 47 UPCA, that the patent in question is valid and that its right is being infringed or threatened with infringement. In urgent proceedings, the Applicant must typically respond to such an order within a short period of time, which requires appropriate preparation of the proceedings.
The Applicant therefore only needs to apply to the Court if it has reliable knowledge of all the facts that make legal action in the proceedings for provisional measures promising and if they can substantiate these facts. The Applicant may prepare for any possible procedural situation that may arise, based on the circumstances, in such a way that it can present the requested information and documents to the Court upon such an order and successfully rebut the arguments of the Defendants’ side. In principle, the Applicant cannot be instructed to carry out any necessary subsequent investigations only during ongoing proceedings and if necessary to obtain the required documents after the fact. On the other hand, the Applicant must not delay proceedings unnecessarily. As soon as it has knowledge of the alleged infringement, it must investigate it, take the necessary measures to clarify it and obtain the documents required to support its claims. In doing so, it must diligently initiate and complete the required steps at each stage (UPC_CFI_452/2023 (LD Düsseldorf), Order of 9 April 2024, GRUR-RS 2024, 7207, para. 128; UPC_CFI_151/2024 (LD Hamburg), Order of 3 June 2024 – Ballinno v. UEFA). On this basis, the waiting period within the meaning of R. 211.4 RoP is to be measured from the date on which the Applicant is or should have been aware of the infringement which would have enabled him to file a promising Application for provisional measures in accordance with R. 206.2 RoP. Whether a delay is unreasonable within the meaning of R. 211.4 RoP depends on the circumstances of the individual case (UPC_CoA_182/2024, Order of 25 September 2024, paras. 228 and 232 – Mammut Sports v. Ortovox Sportartikel). Insofar as a period of one month was mentioned in previous orders (UPC_CFI_463/2023 (LD Düsseldorf), Order of 30 April 2024, ORD_598272/2023, 10x Genomics v. Curio Bioscience; see also UPC_CFI_151/2024 (LD Hamburg), Order of 3 June 2024 – Ballinno v. UEFA), this is not to be understood as a fixed deadline. Rather, it depends on the circumstances of the individual case. Ultimately, the question is always whether the Applicant’s conduct as a whole justifies the conclusion that the enforcement of its rights is not urgent.”
The applicant generally bears the burden of substantiating when it became aware of the existence of the challenged embodiment, when it recognised a potential infringement scenario and how it subsequently pursued clarification of the facts. The relevant period extends from knowledge of the challenged embodiment as a potentially infringing product until the applicant has obtained the facts and evidence necessary to present the infringement case in a fully substantiated manner.
Constructive knowledge of a potentially infringing product may be assumed where, according to ordinary understanding and the normal course of events, the applicant should have become aware of potentially infringing characteristics. However, the defendant bears the burden of substantiating and proving the factual indicators from which earlier constructive knowledge and dilatory conduct may be inferred. Once such indicators have been sufficiently substantiated, it is for the applicant to rebut them or explain why it was not required to have earlier knowledge and why it nevertheless acted with sufficient diligence (UPC_CFI_1928/2025 (LD Düsseldorf), Ottobock v Wilhelm Julius Teufel and MedEnvoy, order of 7 May 2026).
Where the defendant has established concrete indicators of earlier constructive knowledge, it is not sufficient for the applicant merely to demonstrate that a technical investigation, once commenced, was conducted diligently. The applicant must also explain why the necessary steps to obtain and investigate the challenged product were not initiated earlier. If, on the basis of the applicant's submissions, unreasonable delay cannot be excluded, urgency may be denied (UPC_CFI_1928/2025 (LD Düsseldorf), Ottobock v Wilhelm Julius Teufel and MedEnvoy, order of 7 May 2026).
In weighing the interests, the Court will take into account any unreasonable delay in applying for provisional measures under R. 211.4 RoP in conjunction with R. 209.1 (b) RoP. This is based on the fact that the patentee, by acting in such a way, shows that the enforcement of its rights is no longer urgent for him. In such a situation, there is no need to order provisional measures. (cf. UPC_CFI_347/2024)
However, the temporal urgency required for the order of provisional measures is lacking only if the infringed party has been so negligent and hesitant in pursuing its claims that, from an objective point of view, it must be concluded that the infringed party has no interest in the prompt enforcement of its rights and that it is therefore not appropriate to order provisional measures (cf. also UPC_CFI 2/2023 (LD Munich), Order of 19 September 2023, 1513, 1524 – Nachweisverfahren; UPC_CFI_452/2024 (LD Düsseldorf), Order of 9 April 2024, p. 27, GRUR-RS 2024, 7207, para. 126; UPC_CFI_151/2024 (LD Hamburg), Order of 3 June 2024 – Ballinno v. UEFA). (cf. UPC_CFI_347/2024).
Territorial Scope
According to Art. 34 UPCA, decisions of the Court shall cover, in the case of a European patent, the territory of those CMS for which the European patent has effect. This means that injunctions, as a rule, will cover all member states. A restriction would require the presence of certain circumstances, such as when a claimant has restricted the territorial scope of its action (Art. 76(1) UPCA)
However, if a new CMS joins, the decision will be extended to this state, when a corresponding request is filed, it is set out in Art. 34 UPCA that decisions of the Court shall cover the territory of those CMS for which the European patent has effect. In this regard the court of appeal has ruled that this provision is visible to all actual and potential parties to proceedings before the UPC, and so is the fact that several EU Member States have signed the UPCA but not yet ratified and acceded to the UPCA. There are no transitional rules connected to Art. 34 UPCA. When a UPC Signatory State ratifies and accedes, the application of Art. 34 UPCA should be automatic and not subject to limitations, from the day of accession.
According to R. 222.2 RoP requests which have not been submitted by a party during proceedings before the Court of First Instance may therefore be regarded by the Court of Appeal. From the wording (“party”) it is clear that R. 222.2 RoP not only applies to requests of the Appellant or Cross-appellant. In view of the general rule in Art. 34 UPCA, the Court may therefore exercise its discretion to allow the application with regard to further CMS in the appeal proceedings.
The LD Milan summarized the principles for the assessment of an application for provisional measures in its Decision UPC_CFI_1382/2025 issued on 18.06-2026 (Cardo v. Shenzen Ziwu et al) as follows:
Guiding principles for the assessment of an application for provisional measures.
The guiding principles for the assessment of an application for provisional measures in the RoP have been established in the case law of the UPC (UPC CFI no. 317/2024, LD Lisbon, order of 15 October 2024; UPC CFI no. 582/2024, LD Brussels, order of 21 March 2025, with reference to the relevant case law of the court of first instance and the court of appeal). For ease of reference, these guiding principles (also taking into consideration UPC CoA no. 382/2024, order of 14 February 2024) and more specifically the conditions for granting an ap plication for provisional measures, are set out below:
Only a prima facie analysis of the facts (conditions) is required. Such prima facie analysis is articulated in R. 211.2 RoP by only requiring from an applicant to prove with “a sufficient degree of certainty” the made allegations. Achieving a sufficient degree of certainty requires the Court to consider it “at least more likely than not” that the conditions of mentioned rule are met:
(i) the applicant is entitled to initiate proceedings,
(ii) the patent is valid, and
(iii) the patent is infringed.
Although the mentioned conditions already state that it is up to an applicant to provide the requested evidence (and as such bears the burden of proof), the burden of proof that the patent is not valid in respect of inter partes preliminary injunctions lies with the defendant.
The prima facie analysis (articulated as “a sufficient degree of certainty”) does not apply for the assessment of
(i) the (international or substantive) jurisdiction of the UPC and (territorial) competence of a division (which foregoes any decision or order of the Court),
(ii) the requirement of urgency, and
(iii) the weighing of interests.
It should be noted that the mentioned conditions are of a cumulative nature in the sense that not meeting one of these conditions implies the claims for provisional measures to be held unfounded without the necessity or obligation for the Court to further assess any other requirement. Such limited assessment is in line with the purpose of an application for provisional measures and the procedural-economy of such proceedings which should not lead to a mini trial on the merits.
In the decided case the applicant has not provided reasonable evidence with a sufficient degree of certainty that the patent is infringed (Art. 62(4) UPCA and R. 211.2 RoP), the other requirements for preliminary injunctions did not have to be examined. Again it should be noted, that the requirements for granting a provisional measure are of a cumulative nature, in the sense that not meeting one of these conditions implies the claims for provisional measures to be held unfounded without the necessity or obligation for the Court to further assess any other requirement.
In UPC_COA_549/2024 (Court of Appeal, Belkin v Philips, decision of 29 October 2024), the Court of Appeal held that a director of a patent-infringing company represents that company, so that that company cannot be a „third party“ in relation to this director within the meaning of Art. 63 UPCA. Liability as an intermediary cannot therefore arise solely from a person’s role as a director of a patent-infringing company.
injunction despite no proven acts after withdrawal of consent
Where consent to the use of the patented invention has ceased, an injunction may be justified even if no further acts of use have been established after the cessation of consent. Such an injunction may serve the patent proprietor's interest in the effective enforcement of its patent rights (LD Düsseldorf, UPC_CFI_811/2024, decision of 22 June 2026 – Evac v. Shanghai VacDrain et al.).
1. Without prejudice to any damages due to the injured party by reason of the infringement, and without compensation of any sort, the Court may order, at the request of the applicant, that appropriate measures be taken with regard to products found to be infringing a patent and, in appropriate cases, with regard to materials and implements principally used in the creation or manufacture of those products.
2. Such measures shall include:
(a) a declaration of infringement;
(b) recalling the products from the channels of commerce;
(c) depriving the product of its infringing property;
(d) definitively removing the products from the channels of commerce; or
(e) the destruction of the products and/or of the materials and implements concerned.
3. The Court shall order that those measures be carried out at the expense of the infringer, unless particular reasons are invoked for not doing so.
4. In considering a request for corrective measures pursuant to this Article, the Court shall take into account the need for proportionality between the seriousness of the infringement and the remedies to be ordered, the willingness of the infringer to convert the materials into a non-infringing state, as well as the interests of third parties.
One of the corrective measures in infringement proceedings is the destruction of the patent infringing products and/or of the materials and implements concerned according to Art. 64 (2)(e) UPCA.
Regarding the extent of destruction, the decision UPC_CFI_351/2024 and UPC_CFI_595/2024 of the LD Düsseldorf issued on 11.02.2026 (Canon vs. Katun et al) is quite remarkable, where it is stated:
The order for destruction is based on Art. 25(a) UPCA in conjunction with Art. 64(2)(e) UPCA and Art. 64(4) UPCA.
A revocation action may be admissible even if the patent had already expired before the action was filed. The claimant must, however, retain a legitimate legal interest in revocation. The existence of such an interest forms part of admissibility and must be examined by the Court of its own motion.
A legitimate legal interest may continue to exist after expiry where the patent proprietor pursues, or has announced its intention to pursue, claims concerning acts allegedly committed during the patent term. In the case at hand, evidence-preservation proceedings had already been initiated before a national court and the patent proprietor had announced claims for damages based on alleged past infringement. The claimants were therefore still directly affected by the expired patent and retained a legitimate legal interest in seeking its revocation (CD Paris, UPC_CFI_461/2025, decision of 22 April 2026 – Huntsman v BASF).
1. Claim interpretation concerning validity
In G 1/24 – decision of 18 June 2025 the Enlarged Board of Appeal of the EPO confirmed that examiners, opposition divisions and technical boards must always read the claims in the light of the description and drawings when judging novelty and inventive step. Limiting recourse to the specification to cases of linguistic doubt is no longer an option. With that, the Enlarged Boards closed ranks with the UPC. Neither Art 69 (+Protocol) nor Art 84 on their own fully explain how to construe claims for patentability. Rather than elevate one over the other, the Enlarged Board distilled two “principles” from decades of case law: (i) Claims are the starting point and basis for the Art 52–57 EPC analysis. (ii)The description/drawings are always consulted, not only upon ambiguity. Divergence from national courts or the UPC would be “most unattractive”; the EPC’s very purpose is uniformity.
Regarding interpretation of the main claim in light of dependent claims and second medical use claims, the Court of Appeal elaborated in its decision UPA_CoA_528/2024 and UPC_CoA_529/2024 issued on 25.11.2025 (Amgen v Sanofi et al) as follows:
2. Added matter
In UPC_CFI_163/2024 – Decision of 23 May 2025, the counter-claimant argued an inadmissible intermediate generalization. However, the Paris Local Division held that the skilled person would not consider the cited features inextricably linked and would directly and unambiguously derive the amended subject-matter from the application as filed. The skilled person would understand that in describing an embodiment, features may be used to illustrate its working that are not necessarily an essential part of the invention. The added matter challenge failed.
In UPC_CFI_198/2024 (Aylo Premium v. DISH Technologies, decision of 28 May 2025), the Central Division in Paris held that the parent application does not provide support for claiming “requesting the streamlets (212) of the highest quality one of the copies (204, 206, 208) determined sustainable at that time” as stated in feature 1.7. [emphasis added]. By introducing the term “highest” in the claim as granted, this feature includes embodiments in which direct “jumps” to the highest quality are possible and introduce an inadmissible generalization. Indeed, this implies assessing whether, at a certain time, several higher qualities would be sustainable, a determination that neither the flow diagram of Figure 7 nor the description of the parent application foresees or suggests.
In UPC_CoA_382/2025 (Abbott v. Sibio/Umedwings) - Decision of 14 February 2025, the Court of Appeal in Luxembourg stated :
There is added matter if the claim as granted contains subject matter that extends beyond the content of the application as filed. In order to ascertain whether there is added matter, the Court must thus first ascertain, what the skilled person would derive directly and unambiguously using his common general knowledge and seen objectively and relative to the date of filing, from the whole of the application as filed (= Gold Standard as also approved by the Enlarged Board of Appeal of the EPO), whereby implicitly disclosed subject-matter, i.e. matter that is a clear and unambiguous consequence of what is explicitly mentioned, shall also be considered as part of its content. Where the patent is a divisional application, this requirement applies to each earlier application.
The case in question concerned the omission of the term ‘elastomeric’ for a “seal” between a patient's skin and the contacts of electronic sensors. Although a large number of embodiments mentioned in the description always referred to an ‘elastomeric seal’, the Court of Appeal did not consider the deletion of the term ‘elastomeric’ in the asserted patent claim as an intermediate generalization, as other types of ‘seals’ were also mentioned in the general part of the description and in other places of the description, whereby the only important factor was that the contacts of the electronic sensors were protected against the ingress of moisture and contact with the electronic sensors. The Court stated that the overall disclosure of the patent specification as also originally filed made the skilled person aware of the importance of sealing the aforementioned contacts., and that the specification merely stresses the need for sealing as such and that the assembly configuration must match (be suitable for) the method of sealing that is chosen, and vice versa, without prescribing any specific method of sealing or configuration or combination thereof.
Insofar the Court of Appeal approved a “solution-oriented approach”.
In Microsoft v Suinno Mobile & AI Technologies Licensing, 7 January 2026, UPC_CFI_433/2024, the CD Paris applied the “directly and unambiguously derivable” standard (including implicit disclosure) and reiterated that the removal or replacement of a feature is not added matter where the feature is not described as essential, is not indispensable to the function of the invention, and no real modification of other features is required to compensate.
The Court held that the patent as granted extended beyond the content of the application as filed in two distinct ways.
First, it accepted Microsoft’s submission that the application as filed disclosed location being obtained from Wi-Fi identities (a specific mechanism) rather than “Wi-Fi” in the broader, technology-agnostic sense used in the granted claim. In the Court’s view, “location acquired from Wi-Fi” covers embodiments (for example, location inferred via messages received over a Wi-Fi network) that were not directly and unambiguously disclosed. This was treated as an intermediate generalisation.
Second, the Court rejected that the original disclosure supported the simultaneous or combined use implied by “Wi-Fi, GPS, and/or cellular network”. The application as filed described alternative techniques and, where multiple techniques were mentioned, did so in an order of precedence rather than in combination. The granted wording was therefore too broad.
The Court found an additional added-matter defect in the ranking logic. It is considered that the granted wording entails a comparison which, on the Court’s reading, juxtaposes time-dependent click-through rates (at the time of the query) against low click-through rates not defined by time in the same way, whereas the application as filed disclosed click-through rates stored as a function of location or time rather than the claimed comparison structure. The Court therefore concluded that claim 1 also extends beyond the application as filed in this respect.
3. Novelty
In UPC_CFI_505/2024 – Decision of 13 May 2025, the Düsseldorf Local Division stated in the 1st headnote that in the case of a second medical use claim, a substance or composition within the meaning of Art. 54(4) EPC is used for any specific use which is not comprised in the state of the art. Such a therapeutic use can be a new indication, e.g. a disease not yet treated by the claimed substance, or an indication for a new group of patients.
In the Decision UPC_CFI_115/2024 and UPC_CFI_377/2024 issued on 15.10.2025 by the LD Düsseldorf (Hartmann v. Omni-Pac) the Court summarizes aspects to be considered when assessing “novelty” as follows:
An invention is considered new if it differs in at least one of its known features from the prior art. Only that which is immediately apparent to a person skilled in the relevant technical field from the publication or prior use is anticipated in the prior art (see UPC_CoA_382/2024, Order of 14 February 2025, APL_39664/2024 – Abbott v. Sibio). Findings that a specialist only gains on the basis of further considerations or the use of additional writings or uses are not prior art (cf. UPC_CFI_11/2024 (LK Düssel UPC_CFI_50/2024 (LK Düsseldorf), decision of 10 April 2025, para. 136 – Yellow Sphere v. Knaus Tabbert; UPC_CFI_7/2024 (LK Düsseldorf), decision of 3 July 2024 – Kaldewei v. Bette; UPC_CFI_239/2024 (LK Den Haag), decision of 22 November 2024 – Plant-e v. Arkyne (Bioo)).
According to the above-cited Decision of the LD Düsseldorf a feature not expressly mentioned in document A (which is to disclose all the other features of the claimed for subject matter) is considered not to be disclosed, even if this feature is mentioned or disclosed indirectly, namely in a prior art document cited in document A. In this case, there is no direct and unambiguous disclosure in document A, with the consequence that document A is not novelty destroying.
4. Inventive step
In UPC_CFI_359/2023 (Fujifilm Corporation vs. Kodak GmbH et al., decision of 2 April 2025), it was stated that the suitable starting point for the assessment of inventive step is not limited to the closest prior art. Since there may be several ways to arrive at a conclusion, there may accordingly exist several starting points. The decisive point is rather whether such starting point constitutes a suitable starting point which the relevant person skilled in the art would take into account, if confronted with the problem to be solved (cf. Central Division Munich Section, decision of 16 July 2024, UPC_CFI_14/2023 mn. 8.6; Central Division Paris Seat, decision of 21 January 2025, UPC_CFI_311/2023 mn. 57). In this regard, on a regular basis, a solution as claimed is obvious, if, starting from a suitable starting point in the prior art, the skilled person would be motivated (i.e., have an incentive) to consider the solution and implement it as a next step (cf. Central Division Munich Section, decision of 16 July 2024, UPC_CFI_14/2023 mn. 8.6).
In UPC_CFI_505/2024 – Decision of 13 May 2025 (2nd medical use case), the Düsseldorf Local Division stated in the 4th headnote that in terms of inventive step, the subject-matter of the claim may be obvious if the skilled person would have been motivated to implement it as the next step in the view of the problem. A motivation to implement may be absent or negated if the skilled person is faced with many uncertainties or expected difficulties. If there is no motivation at all or a negated motivation, the subject-matter of the claim is not obvious and involves an inventive step.
In UPC_CFI_163/2024 – Decision of 23 May 2025, the Paris Local found that D1 disclosed all but two of the claimed features: the brush rotating means cover (features 1.6.2 and 1.6.3). The technical contribution of these features was limited to shielding and supporting the gear mechanism. D2 disclosed a structurally similar cover with the same function. The Court found no technical prejudice or unexpected effect that would dissuade the skilled person from combining these teachings. Inventive step was denied.
According to the Decision UPC_CFI_189/2024 issued by the CD Paris on 20.10.2025 (Meril v. Edwards Lifescience) the so-called “problem-solution- approach” for the assessment of the “inventive step” seems to be less pertinent when stating in its Headnotes:
In a very similar manner, the LD Mannheim argues in its decision UPC_CFI_338/2024 issued on 12.09.2025 (belissa HAAS v. Windhager) when stating:
Even if it is not absolutely necessary to choose a single starting point, and it is conceivable in the context of examining inventive step to examine whether an invention is based on an inventive step starting from different starting points, this examination requires at least one starting point in order to understand whether the invention was obvious to the skilled person from the prior art.
There must also be a justification as to why the person skilled in the art would consider the selected part of the prior art to be a realistic starting point. This is the case if its teaching would have been of interest to the skilled person at the relevant priority date when faced with the task of developing a similar product or process to that disclosed in the prior art, which presents a similar underlying technical problem to that addressed by the claimed invention. In general, a second step is then required, namely an incentive or stimulus to follow the path of the invention from the starting point (see in particular Central Division, Munich, decision of 16 July 2024, UPC_CFI_1/2023, p. 24 ff.).
The use of a particular means may, in exceptional cases, be suggested even without any specific prompting or suggestion if it is, by its nature, a general means that can be considered for a wide range of applications in the general technical knowledge of the skilled person concerned, and the use of the functionality in question is objectively appropriate in the context under assessment and no special circumstances can be identified which, from a technical point of view, make the application appear impossible, difficult or otherwise impracticable (cf. LD Mannheim, decision of 2 April 2025, UPC_CFI_359/2023, para. 121 with reference to BGH, judgment of 15 June 2021 – X ZR 58/19, GRUR 2021, 1277 para. 47 – guide rail arrangement).
In the Decision UPC_CFI_115/2024 and UPC_CFI_377/2024 issued on 15 October 2025 by the LD Düsseldorf (Hartmann v. Omni-Pac) the Court summarizes aspects to be considered when assessing “inventive step” as follows:
According to Art. 56 EPC, an invention is considered to involve an inventive step if it is not obvious to a person skilled in the art from the prior art.
A feature arbitrarily selected from several possibilities cannot, in general, contribute to inventive step.
A retrospective view must be avoided. The question of inventive step should not be answered by searching, with hindsight and knowledge of the patented subject matter or solution, for (combined) disclosures in the prior art from which this solution could be derived.
Claim Construction and inventive step:
In the decision UPC_CoA_464/2024 et al of the Court of Appeal issued on 25.11.2025 Meril v Edwards) it is stated in Headnotes 3. to 13:
Claim construction
Inventive step
Patent literature does not generally represent the common general knowledge of the skilled person. Only in exceptional circumstances may patent documents be relied upon as evidence of common general knowledge. Such exceptional circumstances may exist where a series of patent documents provides a coherent picture showing that a particular technical procedure was generally known in the relevant technical field.
In the specific field of tyres, a series of closely related patent documents consistently adopting the same technique of planar representation of tread patterns was considered sufficient to establish that this technique formed part of the common general knowledge of the skilled person (LD Milan, UPC_CFI_770/2024 and UPC_CFI_556/2025, decision of 26 May 2026 – Pirelli v Sichuan; referring to EPO Boards of Appeal T 1000/12 and T 412/09).
Very similar statements have been made in the decision UPC_CoA_528/2024 and UPC_CoA_529/2024 I of the Court of Appeal issued on 25.11.2025 (Amgen v Sanofi et al) concerning the assessment of inventive step, wherein primarily the following steps of examination are to be considered:
a) Objective problem
b) Realistic starting point in the relevant field of technology
c) Assessment of inventive step bearing in mind the could-would-test (the problem-solution approach appears less pertinent)
In more detail:
proximity of evidence and informational asymmetry
The principle of proximity of evidence may justify a redistribution of the burden of proof where the party bearing that burden has provided strong indicia of the fact to be proven and the opposing party has privileged access to the documents or information capable of establishing that fact directly. In assessing the evidentiary position, the Court may take account of informational asymmetry between the parties, in particular where a refusal to provide information within the direct possession of one party could compromise the effectiveness of the evidentiary regime (LD Milan, UPC_CFI_770/2024 and UPC_CFI_556/2025, decision of 26 May 2026 – Pirelli v Sichuan; referring to CJEU C-104/10, Kelly).
5. Sufficiency
With respect to this prerequisite it is referred to the decision UPC_CoA_528/2024 and UPC_CoA-529/2024 issued on 25.11.2025 (Amgen v Sanofi et al) where it is stated:
1. The Court may, in response to a justified and proportionate request of the applicant and in accordance with the Rules of Procedure, order an infringer to inform the applicant of:
(a) the origin and distribution channels of the infringing products or processes;
(b) the quantities produced, manufactured, delivered, received or ordered, as well as the price obtained for the infringing products; and
(c) the identity of any third person involved in the production or distribution of the infringing products or in the use of the infringing process.
2. The Court may, in accordance with the Rules of Procedure, also order any third party who:
(a) was found in the possession of the infringing products on a commercial scale or to be using an infringing process on a commercial scale;
(b) was found to be providing on a commercial scale services used in infringing activities; or
(c) was indicated by the person referred to in points (a) or (b) as being involved in the production, manufacture or distribution of the infringing products or processes or in the provision of the services, to provide the applicant with the information referred to in paragraph 1.
Form of the requested information according to Art. 67 (1) UPCA:
According to the Court of Appeal, (UPC_CoA_845/2024 (Order of the Court of Appeal Belkin v. Philips of 30 May 2025), where neither the operative part of the judgment nor the claimant’s application – as in the present case – specifies whether the information is to be provided in paper or electronic form, the information may, in principle, be provided in either format.
Further, in the case of an obligation to communicate information, it is evident that the provision of such information does not have to be provided on the day the notice of intention to enforce is served. It is obvious that the provision of information requires a certain amount of time. For reasons of proportionality (cf. Art. 67(1) UPCA), the party obliged to communicate the information must be granted a reasonable period of time, taking into account the specific circumstances of the individual case. In determining the length of this period, particular consideration must be given, amongst other, to the scope of the information required to be provided, the time period to which the disclosure relates, and the resources available to the obliged party. Since an order pursuant to Art. 67(1) UPCA requires an application that complies with the principle of proportionality, the time period – which begins upon notification pursuant to R. 118.8, first sentence, RoP – must be included in the claimant’s corresponding application. The time period must at any rate be determined in the decision on the merits. The purpose is to ensure that the defendant is properly informed about the period of time available to it.
If no time period is specified in the final decision, it is the responsibility of the claimant to set a time period for the provision of information when notifying the defendant of the intention to enforce the decision.
A time period that is set too short by the claimant triggers the commencement of a reasonable period, to be established by the Court.
The Court of Appeal considers – dependent on the resources of the defendant – a period of 6 to 8 weeks to be reasonable. Such a period of time should be borne in mind when setting a proper time period.
Although Art. 67(1) UPCA does not require the provision of information of manufacture prices Art. 67 (1) UPCA is to be interpreted in such a way that the Court may order an infringer to inform the claimant of manufacturer prices. Since all three language versions require disclosure of the products that were received or ordered (“erhalten oder bestellten” / “reçues ou commandées”), it is evident that the obligation to provide information does not refer solely to the prices received by the defendant, but also to the prices that third parties received for supplying the defendant.
The purpose of the obligation to provide information also supports the conclusion that manufacturer prices are included in Art. 67(1) UPCA. It is intended to enable the patent proprietor to calculate its damages. Since the infringer’s unfair profits is a factor in determining the amount of the damages claim (cf. Art. 13(1)(a) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2024 on the enforcement of intellectual property rights, hereinafter referred to as the "Enforcement Directive," and Art. 68(3)(a) UPCA), the patent proprietor also requires information on the manufacturer prices in order to calculate such profits.
1. The Court shall, at the request of the injured party, order the infringer who knowingly, or with reasonable grounds to know, engaged in a patent infringing activity, to pay the injured party damages appropriate to the harm actually suffered by that party as a result of the infringement.
2. The injured party shall, to the extent possible, be placed in the position it would have been in if no infringement had taken place. The infringer shall not benefit from the infringement. However, damages shall not be punitive.
3. When the Court sets the damages:
(a) it shall take into account all appropriate aspects, such as the negative economic consequences, including lost profits, which the injured party has suffered, any unfair profits made by the infringer and, in appropriate cases, elements other than economic factors, such as the moral prejudice caused to the injured party by the infringement; or
(b) as an alternative to point (a), it may, in appropriate cases, set the damages as a lump sum on the basis of elements such as at least the amount of the royalties or fees which would have been due if the infringer had requested authorisation to use the patent in question.
4. Where the infringer did not knowingly, or with reasonable grounds to know, engage in the infringing activity, the Court may order the recovery of profits or the payment of compensation.
According to the Decision UPC_CoA_8/2025 of the Court of Appeal (Bhagat v. Oerlikon) issued on 09.12.2025, the following principles have to be considered when claiming damages:
(i) Under Art. 68 (1) UPCA, the Court shall, at the request of the injured party, order the infringer who knowingly, or with reasonable grounds to know, engaged in a patent infringing activity, to pay the injured party damages appropriate to the harm actually suffered by that party as a result of the infringement.
(ii) Awards of damages are set forth under Art. 68 UPCA which, implementing Article 13 of the Directive on the enforcement of intellectual property rights (2004/48/EC), distinguishes between situations in which the infringer knew or had reasonable grounds to know that he or she was engaging in a patent infringing activity (Art. 68(1) to (3) UPCA) and situations where the infringer did not knowingly, or with reasonable grounds to know, engage in the infringing activity (Art. 68(4) UPCA).
Where the infringer did not knowingly, or with reasonable grounds to know, engage in the infringing activity, the Court may order the recovery of profits or the payment of compensation (Art. 68(4) UPCA). Being an active stakeholder in the industry, the appellant was at least reasonably expected to monitor the patent landscape before exhibiting its product on the market and should have had reasonable grounds to know about the existence of the patent in dispute and the infringing nature of the attacked embodiment. Failing to do so was at least negligent, so that the provision of Art. 68(1) UPCA applies in the present situation.
(iii) When setting the damages, the Court shall take into account all appropriate aspects, such as the negative economic consequences, including lost profits, which the injured party has suffered, any unfair profits made by the infringer and, in appropriate cases, elements other than economic factors, such as the moral prejudice caused to the injured party by the infringement (Art. 68(3)(a) UPCA).
(iv) Respondent’s submissions on reputational damage mainly rely on general statements, which is not sufficient to establish a reputational damage of respondent’s image due to the infringement of the attacked embodiment by offering it at a trade fair.
(v) None of the additional evidence supports the existence of moral prejudice caused to the respondent. It merely indicates that the appellant was present at a trade fair and explains the functioning of the attacked embodiment. It does, however, not provide information in relation to reputational harm suffered by the respondent.
According to UPC_CFI_16/2024, UPC_CFI_121/2025 andUPC_CFI_124/2025 (Ortovox Sportartikel GmbH v. Mammut Sports , LD Düsseldorf of 22 April 2025) the following applies:
1. If several attorneys-at-law or patent attorneys are working for one party, the allocation of tasks to several attorneys-at-law and patent attorneys is harmless for the reimbursability of costs as long as no additional costs are generated, but only the tasks to be performed and thus the costs incurred are divided between different attorneys-at-law and patent attorneys.
2. Even if the settlement of the costs of the provisional, resp. interim proceedings is usually reserved for a uniform cost assessment procedure following the main proceedings, the costs incurred in the provisional proceedings are separately reimbursed. The upper limits of the recoverable costs for the proceedings for provisional measures and for the main proceedings must therefore be determined separately.
3. Concerning the reimbursable amount, see R.151 (d) and R. 152.
In UPC_CFI_249/2023 (Meril GmbH v. Edwards Lifesciences Corporation, order of 19 December 2023, the Local Division Munich found that according to Article 69 (1) UPCA, costs are generally borne by the unsuccessful party, up to a limit set by the procedural rules, unless equity reasons dictate otherwise. In case of partial success or exceptional circumstances, the court may, under Article 69 (1) UPCA, order costs to be distributed equitably or each party to bear their own costs. If a party causes unnecessary costs, they may be required to bear them under Article 69 (1) UPCA. The resolution and disposal in this case resulted from exceptional circumstances - the resolution of the dispute due to the respondents' issuance of the cease-and-desist declaration on September 25, 2023, and its acceptance by the applicant. Under these circumstances, it would be inequitable to impose costs on the applicant. Regardless of the admissibility and merits of the applicant's request for interim measures at the time of resolution, the respondents could have issued the declaration much earlier, thereby avoiding unnecessary costs incurred by the applicant.
In UPC_CFI_292/2023 (SES-imgotag SA v. Hanshow Technology et al., order of 20 December 2023), the Local Division Munich found that as the unsuccessful party, the applicant of an unsuccessful request for interim measures must generally also bear the costs incurred by the respondent due to the filing of a protective letter.
In UPC_CoA_290/2024 (Stäubli Tec-Systems GmbH v. Respondents, order of 26 March 2025), the Court of Appeal stated that an exception to the general rule of Art. 69 (1) UPCA that the unsuccessful party must bear the reasonable and proportionate legal costs and other expenses incurred by the successful party may apply if a claimant files a revocation action without the patent holder having given rise to the action and the patent holder surrenders the patent immediately at the beginning of the proceedings. For this rule to apply, it is generally necessary that within the time limit for filing a defence to revocation not only the patent holder surrenders the patent but within the same time period also files a request for revocation of the patent pursuant to Art. 105a EPC with the European Patent Office and pays the required fee within that time period.
In UPC_CoA_286/2025 (Order of 23 June 2025, Sumi Agro Europe v. Syngenta) the Court of Appeal confirmed that a timely order to pay court fees suffices even if payment is received after the payment deadline. Internal CMS metadata was not considered relevant for determining the effective lodging date.
Without prejudice to Article 24(2) and (3), actions relating to all forms of financial compensation may not be brought more than five years after the date on which the applicant became aware, or had reasonable grounds to become aware, of the last fact justifying the action.
In UPC_CFI_50/2024, (Yellow Sphere Innovations / Härtwich vs. Knaus Tabbert AG, Decision of April 10, 2025), the LD Düsseldorf stated that without prejudice to Article 24(2) and (3) of the EPC, actions relating to all forms of financial compensation shall be brought no later than five years after the applicant became aware or should have become aware of the last event giving rise to the action. The last event is defined in the English wording as “last fact justifying the action” and in the French version as “dernier fait justifiant l'action”. Thus, what ultimately matters is the fact or circumstance that gave rise to the lawsuit. Any shorter limitation in the national law, e.g. the limitation period of three years in Germany (§§ 195, 199 BGB) does not apply.
In UPC_CFI_495/2023, (ARM vs. ICPillar, Procedural Order of April 11, 2024), the LD Paris stated that based on Articles 3(c), 32(1)(a) and 72 UPCA the UPC has jurisdiction over infringement acts that began before the effective start of the UPC on June 1, 2023 and continued after this date and that are not covered by the period of limitations.
In UPC_CFI_365/2023, (Fujifilm Corp. vs. Kodak GmbH, Order of July 17, 2025), the LD Mannheim stated that in the course of enforcement proceedings, information can be used irrespective of a termination of proceedings or a five-year limitation according to Art. 72 UPCA after receipt of such information. A decision is enforceable in various jurisdictions for a much longer time than five years (e.g. German thirty years in Germany according to § 197 (1) No. 3 German BGB). Even if the five-year period of Art. 72 UPCA has lapsed; there may be reasons, why the claimant still may want to verify points by referring to the rendered information. In case of limitation applied to the information, Claimant would then be forced to get hold of the information already rendered before anew, which therefore appears to be not convincing.
Concerning the limitation of claims relating to all forms of financial compensation on the one hand and in relation to injunctions on the other hand the LD Düsseldorf decided in its Decision UPC_CFI_811/2024 published on 22.06.2026 (EVAC v. Shanghai VacDrain et al):
According to Article 72 UPCA, without prejudice to Article 24(2) and (3) UPCA, actions relating to all forms of financial compensation may not be brought more than five years after the date on which the applicant became aware, or had reasonable grounds to become aware, of the last fact justifying the action. This limitation period does not apply for injunctions. As an injunction is directed towards the future, it is not subject to the limitation period.
1. An appeal against a decision of the Court of First Instance may be brought before the Court of Appeal by any party which has been unsuccessful, in whole or in part, in its submissions, within two months of the date of the notification of the decision.
2. An appeal against an order of the Court of First Instance may be brought before the Court of Appeal by any party which has been unsuccessful, in whole or in part, in its submissions:
(a) for the orders referred to in Articles 49(5), 59 to 62 and 67 within 15 calendar days of the notification of the order to the applicant;
(b) for other orders than the orders referred to in point (a): (i) together with the appeal against the decision, or (ii) where the Court grants leave to appeal, within 15 days of the notification of the Court's decision to that effect.
3. The appeal against a decision or an order of the Court of First Instance may be based on points of law and matters of fact.
4. New facts and new evidence may only be introduced in accordance with the Rules of Procedure and where the submission thereof by the party concerned could not reasonably have been expected during proceedings before the Court of First Instance.
Non-suspensive effect of an appeal against a first instance decision on the infringement or non-infringement of a patent (Art. 74 (1) UPCA)
According to the Court of Appeal (UPC_CoA_365/2025 (order of 21 May 2025, Knaus Tabbert v. Yellow Spehre et al)): Pursuant to Art. 74(1) UPCA, an appeal has no suspensive effect unless the Court of Appeal decides otherwise at the reasoned request of a party. The Court of Appeal can therefore only grant the request if the circumstances of the case justify an exception to the principle that the appeal has no suspensive effect. In this context, it must be examined whether the appellant's interest in maintaining the status quo until the decision on the appeal has been made outweighs the interest of the defendant (UPC Court of Appeal, order of 18 January 2024, UPC_CoA_4/2024, App_100/2024 Meril/Edwards, p. 5; order of 19 June 2024, UPC_CoA_301/2024, App_35055/2024, para. 7; Order of 19 August 2024, UPC_CoA_388/2024, APL_39884/2024, Sibio et al/Abbott, para. 6).
The order of suspensive effect may be considered in particular if the order, against which the appeal is directed is manifestly erroneous (UPC Court of Appeal, order of 18 January 2024, UPC_CoA_4/2024, App_100/2024, Meril/Edwards, p. 5; order of January 2024, UPC_CoA_4/2024, App_100/2024, Meril/Edwards, p. 5; order of 19 August 2024, UPC_CoA_388/2024, APL_ 39884/2024, Sibio et al/Abbott, para. 7) or the enforcement from the contested of the contested decision would render the appeal largely irrelevant (UPC Court of Appeal, order of 6 November 2023, UPC_CoA_407/2023, App_584588/2023 Ocado/third party; order of 2 May 2024, UPC_CoA_177/2024, APL_20002/2024, Progress Machinery & Automation, para. 10).
Furthermore, the violation of fundamental procedural rights such as the principle of the right to be heard may also justify the ordering of suspensive effect if it cannot be ruled out from the outset that the court would have come to a different conclusion without the result without the violation (UPC Court of Appeal, order of 29 October 2024, UPC_CoA_549/2024, App_53031/2024, Philips/Belkin, para 61).
The above has been confirmed by the following Order of the Court of Appeal:
According to the Order UPC_CoA_000935/2025 issued by the Court of Appeal on 16.01.2026 (N.N. vs Amycel), the Court stated in relation to an application for suspensive effect as follows:
An appeal shall not have suspensive effect unless the Court of Appeal decides otherwise at the motivated request of one of the parties (Article 74.1 UPCA). According to R. 223.2 RoP, the application for suspensive effect shall set out
(a) the reasons why the lodging of the appeal shall have a suspensive effect and
(b) the facts, evidence and arguments relied on.
The Court of Appeal therefore grants the application only if the circumstances of the case justify an exception to the principle that an appeal shall have no suspensive effect. It must be examined whether, on the basis of these circumstances, the appellant's interest in maintaining the status quo until the decision on its appeal exceptionally outweighs the respondent's interest. An exception to the principle that an appeal has no suspensive effect may apply, for instance, if the appealed order or decision is manifestly erroneous, or if the appeal becomes devoid of purpose in the absence of suspensive effect (CoA 24 November 2025, UPC_CoA_000911/2025, Suinno v Microsoft; CoA 20 May 2025, UPC_CoA_430/2025 APL_23093/2025 App_23094/2025, Chint v. Jingao).
The requirement of exceptional circumstances has to be established by the applicant.
In the aforementioned case the Applicant has claimed that the sending of registered letters to the parties to whom it offered for sale, sold, delivered or otherwise traded in the infringing product informing them of the impugned decision and requesting them to return any current stock of the infringing products (part III of the impugned decision) would be impossible to revert and that the publication of a message on the website of the Applicant (part IV of the impugned decision) would entail "irreversible consequences”, without establishing that the impugned decision is manifestly erroneous.
Even if the Court were to accept that the consequences of these orders are not fully reversible, it does not follow that the appeal becomes devoid of purpose in the absence of suspensive effect and that the Applicant's interest in maintaining the status quo until the decision on appeal outweighs Amycel's legitimate interest informing the Applicant’s customers of the decision.
The Court of Appeal decided without having heard Amycel, since the Court of Appeal must decide on an application for suspensive effect without delay (R. 223.3 RoP) and the outcome was in favour of Amycel.
Suspensive effect of an appeal against a decision on actions or counterclaims for revocation (Art. 74 (2) UPCA)
Notwithstanding para. 1 of Art 74 UPCA pursuant to Art. 74(2) UPCA an appeal against a decision on actions or counterclaims for revocation shall always have suspensive effect. This means that the filing of such an appeal triggers the suspensive effect provided in Article 74(2) UPCA, which is mandatory and automatic for decisions on validity or counterclaims for revocation, respectively. This effect extends to the entire decision, including the point at which the Court of First Instance ruled that the unsuccessful party should pay the legal costs. Correspondingly, the successful party cannot enforce their claim for refunding legal costs beforehand, i.e. before a final decision has been issued by the Court of Appeal concerning the validity of the patent in suit.
In the order UPC_CFI_1738/2025 of the LD Milan issued on 10.02.2026 (AWM/Schnell vs. Progress) the Court also addressed the issue of the different time limits for appealing against the first-instance decision concerning the validity of the contested patent (= 2-month time limit acc. to Art. 73 (1) UPCA) on the one hand and for requesting a decision on costs pursuant to Rule 150 RoP (= 1-month time limit acc. to Rule 151 RoP) on the other hand, and resolved this issue as follows:
In the decided case the unsuccessful party had not lodged an appeal against the decision of the first instance re: the validity of the contested patent on the date the application for a cost decision was submitted. And as mentioned above, since Rule 150 RoP in connection with Rule 151 RoP provides a one-month term for filing an application for a cost decision, which is clearly shorter than the two-month term set for appealing a decision of first instance re: the validity of the contested patent, the simultaneous pendency of the two proceedings is normal, even in the specific case under consideration, which is characterized by the aforementioned automatic suspensive effect provided for in Art. 74(2) UPCA.
Nevertheless, it is possible to reasonably and efficiently coordinate the two proceedings through suspension in this particular situation. In accordance with the general principles of flexibility, fairness, proportionality, and equity, and in application of the provisions of R. 295(c) and (m) RoP, the present proceedings were stayed until the Court of Appeal issues its final decision in proceedings re: the validity of the contested patent, or until the appeal proceedings conclude by any means other than a decision on the merits. For the sake of completeness, the Court acknowledged the previous case law cited by the applicants for cost determination (UPC CFI No. 831/2025, CD Paris, 29.4.2025), from which the Court respectfully deviated. It should be noted that the aforementioned decision did not consider the applicability of Article 74(2) UPCA at all. Other case law not referred to by the parties was also held relevant (see UPC CFI No. 131/2025, LD Brussels, 2.5.2025). In the present order, after a thorough review of the current regulations, the Court determined that it was permissible to stay the proceedings for cost determination, even in cases where the automatic and mandatory suspensive effect stipulated in Article 74(2) UPCA does not apply.
Correspondingly, the Court stayed the cost proceedings until the judge-rapporteur is notified that the UPC Court of Appeal has issued a judgment on the merits in the appeal proceedings re: the validity of the contested patent or until the same dispute is otherwise terminated. The interested party was ordered to inform the judge-rapporteur of the Court of Appeal’s decision on the merits or of the termination of the dispute by any means other than a decision on the merits issued by the UPC Court of Appeal.
In UPC_CFI_359/2023 (Fujifilm Corporation vs. Kodak GmbH et al., decision of 2 April 2025). it was stated that in accordance with Art. 76(1) UPCA, the court shall decide in accordance with the requests submitted by the parties and shall not award more than is requested. Art. 65 (3) UPCA does not give a proprietor of a patent the opportunity to partially fend off a (counter-)claim for revocation without filing a proper request specifying the extent to which the patent-in-dispute shall be maintained in part (deviating opinion with regard to subclaims: Central Division, Paris seat, decision of 22 January 2025, UPC_CFI_310/2023, GRUR-RS 2025, 637 mn. 138).
In UPC_CFI_198/2024 (Aylo Premium v. DISH Technologies, decision of 28 May 2025), the Central Division in Paris explained in the Headnote that the Court can, if requested, limit the scope of revocation of a European (bundle) patent to national parts of a European Patent validated in individual UPC Member States (ne ultra petita). Anyone is free to bring nullity proceedings in the remaining UPC Member States after the Unified Patent Court has declared the European patent invalid for certain national parts. As a general rule, according to Art. 34 UPCA, decisions of the Court shall cover, in the case of a European patent, the territory of those Contracting Member States for which the European patent has effect. This provision defines the possible scope of UPC judgments but does not restrain the possibility to limit the revocation of European patents to certain UPC Member States.
In UPC_CoA_405/2024 (Alexion v Amgen, 19 June 2025) the Court of Appeal confirms that the Court need not give parties advance notice of every possible legal authority it may rely upon, provided that the authority forms part of the corpus that a “well-informed representative” should already know (here: EPO TBA/EBA case law). Unless the reasoning deviates unexpectedly from settled jurisprudence, no violation of Art 76(2) arises.
The parties may, at any time in the course of proceedings, conclude their case by way of settlement, which shall be confirmed by a decision of the Court. A patent may not be revoked or limited by way of settlement.
The Court may order, at the request of the applicant and at the expense of the infringer, appropriate measures for the dissemination of information concerning the Court's decision, including displaying the decision and publishing it in full or in part in public media.
According to the Decision UPC_CFI_351/2024 and UPC_CFI_595/2024 of the LD Düsseldorf issued on 11.02.2026 (Canon vs. Katun et al) the following applies:
If a defendant has used its own website to create the impression that there has been no patent infringement, it may be justified under Art. 80 UPCA to not only allow the claimant to publish the Court’s decision, but also to require the defendant to publish the operative part of the decision on its website.
The details for this decision were as follows:
1. The decision whether to permit publication should depend on a two-step test:
(1) whether the claimant has a legitimate interest in publishing the decision and
(2) whether the defendant’s interests outweigh this interest (UPC_CoA_464/2024, Decision of 25 November 2025, para. 199-200 – Meril v. Edwards).
2. The Claimant is further seeking an order obliging the Defendants to publish the operative part of the Court’s decision on their websites. In the case at hand, such an order also appears justified under Art. 80 UPCA. As mentioned before, the Defendants have used their own website to report on the proceedings. They have expressed confidence that there has been no infringement. An obligation to publish the operative part of the Court’s decision stating that an infringement has occurred is an appropriate measure to remove the impression created by the Defendants themselves.
publication on the defendant's own website
In another case, the Court ordered the defendant to publish a prescribed notice of the infringement decision on the homepage of its own website. The notice had to remain on the homepage for two continuous months, include a direct link to the full decision, be immediately visible at the top of the homepage and occupy at least 10% of the homepage area. Compliance with the publication order was secured by a penalty payment of EUR 5,000 for each day of delay (LD Milan, UPC_CFI_770/2024 and UPC_CFI_556/2025, decision of 26 May 2026 – Pirelli v Sichuan).
1. A request for rehearing after a final decision of the Court may exceptionally be granted by the Court of Appeal in the following circumstances:
(a) on discovery of a fact by the party requesting the rehearing, which is of such a nature as to be a decisive factor and which, when the decision was given, was unknown to the party requesting the rehearing; such request may only be granted on the basis of an act which was held, by a final decision of a national court, to constitute a criminal offence; or
(b) in the event of a fundamental procedural defect, in particular when a defendant who did not appear before the Court was not served with the document initiating the proceedings or an equivalent document in sufficient time and in such a way as to enable him to arrange for the defence.
2. A request for a rehearing shall be filed within 10 years of the date of the decision but not later than two months from the date of the discovery of the new fact or of the procedural defect. Such request shall not have suspensive effect unless the Court of Appeal decides otherwise.
3. If the request for a rehearing is well-founded, the Court of Appeal shall set aside, in whole or in part, the decision under review and re-open the proceedings for a new trial and decision, in accordance with the Rules of Procedure.
4. Persons using patents which are the subject-matter of a decision under review and who act in good faith should be allowed to continue using such patents.
In an order of the Court of Appeal UPC_CoA_402/2024 (order of the CoA of 19 June 2025 re: Alexion v. Samsung Bioepsis) it was confirmed that as a matter of principle decisions by the Court of Appeal are to be final.
However, a so-called rehearing is possible, wherein Art. 81(1) UPCA makes clear that a rehearing may only exceptionally be granted, namely in cases where a decision suffers from one of the serious deficiencies mentioned in Art 81 (1) UPCA and R. 247 RoP. Mere errors of any kind cannot be a ground for a rehearing.
Furthermore, a defect may only be considered fundamental if it can be established that without the defect the same decision would not have been taken (see judgment of 3 July 2014 in Kamino International Logistics and Datema Hellmann Worldwide Logistics, C-129/13 and C130/13, EU:C:2014:2041, paragraph 79 and the case-law cited). It is for the applicant to show this.
The same applies to evidence. It is for the parties to bring forward all the evidence required to sufficiently substantiate their arguments. The Court shall evaluate the evidence presented by the parties freely and independently (Art. 76(3) UPCA). The Court may make its own assessment of the weight that expert opinions and witness statements carry, whereby it may consider its evaluation of the neutrality of an expert or witness. The manner in which questions are asked or in which answers are formulated, may be a basis for such an assessment.
Since R. 247(c) RoP refers to Art. 76 UPCA re “right to be heard” a violation of this right is to be considered as a fundamental procedural defect which may be a reason for a rehearing.
The right to be heard is reflected in Art. 76(2) UPCA, which provides that decisions on the merits may only be based on grounds, facts and evidence, which were submitted by the parties or introduced into the procedure by an order of the Court and on which the parties have had an opportunity to present their comments. It is not required that a party must always have had the opportunity to provide comments in writing.
But it is to be borne in mind, that in case of a fundamental procedural defect, if known, must always be objected during the proceedings leading to the decision or an appeal (R. 248 RoP). This means that if in the opinion of a party the right to be heard is being violated the corresponding violation has to be objected immediately.
The reference to case law of the Technical Boards of Appeal (TBAs) and the Enlarged Board of Appeal (EBA) of the European patent Office (EPO) which the Court helds relevant for a decision and the lack of discussion this case law is not a fundamental procedural defect, because case law that parties are expected to have knowledge of includes case law of the Technical Boards of Appeal (TBAs) and the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) relevant for the issues at hand and the arguments advanced. Although the Court of Appeal is not bound by such case law, there is reason to consider TBA decisions and – even more so – EBA decisions - since these Boards apply the same substantive law provisions of the European Patent Convention (EPC) as the Court. A similar approach has been and still is taken by national courts of the Contracting Members States and other countries party to the EPC, such as the UK, who have national laws that are largely based on the substantive law provisions of the EPC.
When litigating before the Court, party representatives are thus expected to be also aware of the relevant case law developed by the TBAs and EBA.
Finally, unless a decision could not have been objectively foreseen and would come as a surprise to the well informed representative, e.g. for being inconsistent with and fundamentally deviating from established case law or based on case law not yet available at the time of the oral hearing, the right to be heard does not require that the Court notifies the parties in advance of its (preliminary) opinion on any issue in dispute between the parties and / or the basis therefor, either in an interim conference or in a preliminary opinion issued prior to the oral hearing. The UPCA and RoP do not provide for such a system. The Court may provide a preliminary introduction to the action (R. 112.4 RoP) which may contain a preliminary opinion but is not held to do so.
Art. 82 UPCA specifies the enforcement of a judgement and is also applicable for arbitration awards and mediation agreements reached by use of the PMAC (Art. 35.2 UPCA).
1. Related Laws
A) Brussels I Recast Regulation 1215/2012 - EU member states
The rules of recognition and enforcement according to Brussels I Recast Regulation still apply. Enforcement is a two-step procedure, first requiring recognition of the judgment and second the enforcement. According to Art. 39 Brussels I Recast Regulation, a judgment given in a Member State, like UPC decisions, shall be recognised in the other Member States without any special procedure being required.
A certificate according to Annex I of Brussels I Recast Regulation shall be executed by UPC upon request of any interested party (Art. 53 Brussels I Recast Regulation).
B) Lugano Convention 2007 - EFTA member states
Enforcement of an UPC judgement outside the applicability of Brussels I Recast Regulation in a country of the European Free Trade Association (Denmark, Iceland, Norge, Switzerland) is handled by the Lugano Convention 2007 with recognition and enforcement according to Title III Lugano Convention. According to Art. 33 Lugano Convention no special procedure is required for recognition of a judgment.
The order for the enforcement according to Art. 82 .1 UPCA has the function of recognition of the judgement, i.e. declaration of enforceability, even if this is not necessarily required under Art. 39 Brussels I Recast Regulation.
C) Hague Judgments Convention 2019 – EU, UK, Ukraine, Uruguay
The Hague Judgment Convention 2019 governs the recognition of judgments in civil and commercial matters. It is in force for EU, the United Kingdom, Ukraine and Uruguay. The USA signed the convention but has not ratified yet. Since EU is a contracting member, the UPC decisions are judgments according to Art. 4.1 Hague Judgments Convention given by a court of a Contracting State (State of origin) which shall be recognised and enforced in another Contracting State (requested State) in accordance with the provisions of this convention. The procedure for recognition, declaration of enforceability or registration for enforcement, and the enforcement of the judgment, are governed by the law of the requested State unless this Convention provides otherwise (Art. 13.1 Hague Judgments Convention).
2. Direct Enforcement in UPC member states
In UPC_CFI_239/2023 (Plant-e, Plant-e Knowledge v. Arkyne Technologies S.L., order of 15 February 2025), the LD The Hague stated that the UPC is deemed to be a court of a Member State for the purposes of the Brussels I Recast Regulation (see Art. 71a Brussels I). Its decisions and orders are directly enforceable in any contracting member state in accordance with Art. 82 UPCA, Art. 71d Brussels I Recast regulation and R. 354.1 RoP.
Outside the UPC contracting member states, Brussels I Recast Regulation is applicable for the other member states and Lugano Convention for the countries of the European Free Trade Association.
3. Preliminary Injunction Orders
In UPC_CFI_2/2023 (10xGenomics v. NanoString Technologies et al), the Local Division in Munich emphasized the immediate enforceability of preliminary injunction orders without the need for additional court enforcement orders under Art. 82.4 UPCA. The decision clarifies that the conditions for imposing fines are conclusively defined in Art. 82.4 UPCA and any additional enforcement requirements from national laws are not applicable. Rule 118.8 of the Rules of Procedure, according to its clear wording does not apply to orders under Art. 62 UPCA. In response to the violations, the court imposed a fine of 100.000,00 EUR, emphasizing the importance of the court orders and the need for an effective enforcement mechanism. The court considered factors such as the nature, extent, and duration of the violations in determining the amount of the fine.
4. Penalty Payments
According to R. 354 RoP, the Court’s decisions and orders may provide for periodic penalty payments payable to the Court in the event that a party fails to comply with the terms of the order or an earlier order.
In UPC_CoA_835/2024 (Amazon et. al. vs. Nokia et al., order of 20 January 2025), the Court of Appeal stated that an order of penalty payments according to Art. 82.4 UPCA in the event that a party does not comply with an order of the Court, can apply only to the parties and not to the representatives, although that does not exclude holding the parties liable for contraventions committed by their representatives.
In it was stated that the penalty payment to be imposed pursuant to Art. 82.4 UPCA is intended to punish non-compliance with the decisions of the UPC. The penalty payment is punitive in nature and can therefore be imposed not only to enforce compliance with an order, but also to punish past non-compliance (as in this case: LK Düsseldorf, UPC_CFI_177/2023 (myStromer vs. Revolt, order of 18. October 2023); v.Falck/Stoll in Tilmann/Plassmann, EPGÜ Art. 82 para. 123 f.; dissenting opinion Kircher in Bopp/Kircher, Handbuch Europäischer Patentprozess, 2nd edition 2023, § 27 para. 60). A restriction of the penalty payment to the purpose of compelling the party concerned to comply with a court order cannot be inferred from the wording of Art. 82.4 UPCA.
According to UPC_CoA_845/2024 (Order of the Court of Appeal Belkin v. Philips of 30 May 2025) penalty payments do not only serve a coercive function but also have a punitive nature, their imposition is justified even where the defendant has, at a later stage, i.e. belatedly, complied with the obligation to provide information as ordered.
The punitive nature of the penalty payment is evident from the wording of Art. 82(4) UPCA.
A party that does not comply with a court order may, according to the French version of Art. 82(4) UPCA, be sanctioned with a penalty ("sanctionnée par une astreinte", emphasis by the Court). The punitive nature of the sanction is confirmed by the fact that, under French law, an “astreinte” according to prevailing opinion serves a punitive function, as it can be imposed even if the court order is complied with belatedly (cf. Art. L.131-4 para. 3 of the Code des 12 procédures civiles d’exécution).
The punitive nature is also indicated for the same reasons by the English version (“sanctioned with a […] penalty payment”) (cf. Falck/Stoll in Tilmann/Plassmann, Art. 82 UPCA para. 123).
The German version of Art. 82(4) UPCA does not contradict the punitive nature of the penalty payment. It states that a party may be “imposed with penalty payments” (“kann mit […] Zwangsgeldern belegt werden”). To the legally trained German reader, the term “Zwangsgeld” may suggest a purely coercive function – since German civil procedure distinguishes between “Zwangsgeld” (§ 888 ZPO) and “Ordnungsgeld” (§ 890 ZPO) – only “Ordnungsgeld” has a punitive nature. However, given the clear wording in the English and French versions, it must be assumed that the drafting body, in choosing the term “Zwangsgeld” ("penalty payment"), did not intend to draw the distinction present in German civil procedural law.
Further, it is worth to be noted that any sanction with punitive characteristics requires fault (nulla poena sine culpa). In accordance with this requirement, the payment of a penalty sum shall be imposed when the defendant's fault can be established. Thus, a penalty payment may only be imposed if the defendant failed to undertake actions that were both possible and reasonable in order to fulfil the obligation that is reinforced by a penalty. The burden of proof that timely and proper compliance was not reasonable and/or possible lies with the defendant.
5. Enforcement and long arm jurisdiction
In FUJIFILM Corporation v. Kodak GmbH. et. al., UPC_CFI_365/2023 , order of 30 January 2026 The Mannheim Local Division considers for conduct outside the UPC system that coercive enforcement — in particular penalties for non-compliance with injunctions relating to foreign territory — requires prior recognition of the UPC decision in the state concerned, unless a recognition regime provides otherwise.
Hence, the adjudicatory reach of the UPC may extend beyond its territory. Its enforcement power does not automatically follow.
At the same time, the Court accepted that certain enforcement measures may still be ordered and enforced within UPC territory even if they relate factually to activities abroad. Where the infringing manufacture takes place in a UPC state, the defendant may be ordered to provide information about downstream sales outside the UPC. Such disclosure serves the purpose of quantifying damages for the infringement committed within UPC territory and is directed at a defendant established there. In that constellation, the Court did not see the same comity concerns as with direct enforcement of foreign-market injunction effects.
Article 83 UPCA delineates the transitional framework governing the jurisdictional interplay between national courts and the Unified Patent Court (UPC) during the initial seven years following the Agreement's entry into force.
1. Scope of Parallel Jurisdiction
Under Article 83.1 UPCA, during the transitional period, actions for infringement or revocation of European patents, as well as actions concerning supplementary protection certificates (SPCs), may still be initiated before national courts.
In UPC_CFI_9/2024 (Texport v. Sioen, order of 29 October 2024), the Court of First Instance clarified that the parallel jurisdiction during the transitional period also encompasses actions for a declaration of non-infringement, even though such actions are not explicitly mentioned in Article 83(1) UPCA. The Court reasoned that an action for a declaration of non-infringement is the mirror of an action for infringement, referencing the CJEU's decision in Tatry (C-406/92).
Furthermore, in UPC_CoA_227/2024 (Mala v. Nokia, order of 17 September 2024), the Court of Appeal held that during the transitional period of Article 83 UPCA, Articles 29 to 32 and 71c of the Brussels I Recast Regulation apply where proceedings are pending before the UPC and a national court, even if the proceedings before the national court were initiated prior to the transitional period.
In UPC_CoA_156/2025 (CoA, XSYS Germany et al. v. Esko Graphics Imaging, order of June 2, 2025), the CoA found that during the transitional period set out under Art. 83 UPCA, and unless the patent has been opted out from the exclusive competence of the Court pursuant to Art. 83(3) UPCA, the (exclusive) competence of the UPC coexists with a parallel competence of national courts before which an action for infringement of a European patent may still be brought. Although it provides for a concurrent competence during the transitional period according to which the patent holder has the option to initiate infringement proceedings either before the UPC or before a national court, said option is limited to the choice of forum and does not provide, as a result of such a choice, for a partial or limited competence of the elected court, whether as to the subject matter (the patent infringement) of the action or as to the time period for which the chosen court is competent.
2. National material law under Art. 83 UPCA:
The OLG Karlsruhe confirmed, in 6 U 232/22, decision of 14 February 2024, that the Unified Patent Court Agreement (UPCA) does not alter the application of material law over claims related to the national parts of European patents. Specifically, the Court clarified that claims for infringement of the German part of a European patent remain subject to national patent law, including §§ 139 ff. PatG, even after the UPCA has entered into force. The Court noted that the material provisions of the UPCA, including Arts. 25 et seq., apply exclusively when the Unified Patent Court has jurisdiction.
The Preparatory Committee of the UPC, in an interpretative note dated 29 January 2014, clarified that if a European patent, an application for a European patent, or a supplementary protection certificate (SPC) issued for a product protected by a European patent is opted out under Art. 83.3 UPCA, or if an action is brought before a national court during the transitional period under Art. 83.1 UPCA, the UPCA no longer applies to the opted-out patent, application, or SPC. Consequently, the competent national court must apply the applicable national law, without being bound by the substantive patent law provisions in the UPCA, including those in Chapter V.
In UPC_CoA_156/2025 (CoA, XSYS Germany et al. v. Esko Graphics Imaging, order of June 2, 2025), the CoA found that the question of whether the substantive law of Art. 25 et seq. UPCA and the measures, procedures and remedies as laid down under Art. 56 UPCA are applicable in relation to acts having occurred before the entry into force of the UPCA is to be decided at a later stage and is not one to be addressed at the stage of a Preliminary objection.
3. Continuation of National Proceedings
Article 83.2 UPCA stipulates that any action pending before a national court at the conclusion of the transitional period shall remain unaffected by the expiry of this period.
4. Opt-Out Mechanism
Article 83.3 UPCA introduces the opt-out mechanism, permitting proprietors or applicants of European patents, as well as holders of SPCs, to exclude their patents from the UPC's exclusive competence. The opt-out must be notified to the Registry no later than one month before the end of the transitional period and takes effect upon its entry into the register.
In UPC_CoA_79/2024 (Neo Wireless GmbH & Co. KG v. Toyota Motor Europe, order of 4 June 2024), the Court of Appeal emphasized that a valid opt-out requires the participation of all proprietors of all national parts of the European patent. Failure to include all such parties renders the opt-out ineffective.
5. Withdrawal of Opt-Out (“Opt-In”)
Article 83.4 UPCA allows for the withdrawal of an opt-out (= “opt-in”), provided no action has already been brought before a national court. The withdrawal becomes effective upon its entry into the register.
In UPC_CoA_489/2023 (AIM Sport Development AG v. Supponor Oy et al., order of 12 November 2024), the Court of Appeal clarified that the phrase "unless an action has already been brought before a national court" in Article 83(4) refers specifically to actions initiated during the transitional period. Actions commenced prior to this period do not preclude the withdrawal of an opt-out. The Court emphasized that the term “action” under Article 83(1) UPCA includes all proceedings within the Court's competence, but that only those initiated during the transitional period have an effect on the ability to withdraw an opt-out.
In UPC_CFI_9/2023 (Huawei v. Netgear, decision of 18 December 2024), the Munich Local Division addressed the effective date of a withdrawal of an opt-out. The Court held that the effective date is the date of entry in the register if no correction is requested from the registry. Furthermore, the only required form for the “opt-in” is the corresponding CMS workflow; the provided template is not a required form within the meaning of Rule 4.1 RoP.
In UPC_CFI_182/2023 (CUP&CINO v. Alpina Coffee, order of 13 September 2023), the Vienna Local Division held that an application to opt-out filed after the commencement of an action before the Court is ineffective. The Court reasoned that the jurisdiction of the UPC can no longer be withdrawn once an action has been initiated, and a request for interim measures constitutes an “action” within the meaning of Rule 5 and 5A RoP and Article 83(3) UPCA.
In UPC_CFI_515/2023 (Volkswagen et al. v. NST, order of 8 May 2024), the Munich Local Division confirmed that a valid withdrawal of an opt-out can be filed by a representative included in the official list of patent attorneys kept by the Registrar pursuant to Article 48(3) UPCA. The representative was not required to justify the filing with a power of attorney at the time of filing the application on behalf of NST (Rule 5.3(b)(i) RoP, Article 83(3) UPCA).
In UPC_CoA_156/2025 (CoA, XSYS Germany et al. v. Esko Graphics Imaging, order of June 2, 2025), the CoA found that in case of an effective withdrawal from an effective opt-out, the UPC is competent to decide on alleged acts of infringement which have occurred during the time period between the date of the opt-out and that of the withdrawal.
6. Counterclaims for Revocation
In UPC_CFI_483/2023 (Seoul Viosys v. epert e-Commerce, decision of 10 October 2024), the Düsseldorf Local Division affirmed the UPC's international competence regarding counterclaims for revocation of non-opted out European patents. The Court held that such counterclaims fall within the UPC's jurisdiction pursuant to Article 32(1)(e) UPCA, Article 83(3) UPCA, and Article 24(4) of the Brussels I Recast Regulation, even when such patents are also subject to national proceedings.
7. Extension of Transitional Period
Article 83.5 UPCA provides that five years after the Agreement's entry into force, the Administrative Committee shall conduct a comprehensive consultation with patent system users and assess the frequency and reasons for actions still being brought before national courts. Based on this evaluation and an opinion from the Court, the Committee may decide to prolong the transitional period by up to seven years.
1. The depositary shall draw up certified true copies of this Agreement and shall transmit them to the governments of all signatory or acceding Member States.
2. The depositary shall notify the governments of the signatory or acceding Member States of:
(a) any signature;
(b) the deposit of any instrument of ratification or accession;
(c) the date of entry into force of this Agreement.
3. The depositary shall register this Agreement with the Secretariat of the United Nations.
This Agreement shall be of unlimited duration.
