Case: ONWARD Medical v Niche Biomedical — Court of Appeal, 27 March 2026 (UPC_CoA_898/2025)
In this order, the Court of Appeal clarified an important procedural question concerning preliminary injunction proceedings: whether a patent proprietor may rely on a claim version that has not been granted. The Court confirmed that this is not excluded per se and depends on the circumstances of the individual case. However, despite confirming the admissibility of such an approach, the Court ultimately rejected the appeal because infringement – both direct and indirect – was not established with the required degree of certainty. The decision provides useful guidance on the admissibility of auxiliary requests in PI proceedings, the application of Rule 222 RoP on appeal, and the requirements for establishing indirect infringement under Art. 26 UPCA.
The applicant sought a preliminary injunction before the Munich Local Division based on EP 3 421 081 relating to a neuromodulation system. The Local Division rejected the application, finding insufficient certainty regarding validity and holding that preliminary measures could not be based on amended claim versions. On appeal, the applicant relied on a restricted claim version combining granted claim 1 with features of dependent claims 7 and 9. The Court of Appeal therefore had to address both the admissibility of this approach and the merits of infringement.
The Court first clarified that relying on a non-granted claim version is not automatically excluded in PI proceedings. In particular, the Court rejected the view that Rule 211.2 RoP requires validity to be assessed only with respect to the granted claim version. The reference to the “patent in question” does not limit the analysis to the granted claims. The Court further emphasised that the summary nature of PI proceedings does not justify a general exclusion of restricted claim versions. Instead, admissibility must be assessed on a case-by-case basis, including whether the defendant’s right of defence would be unfairly affected. At the same time, the Court stressed that the summary nature of PI proceedings may justify limiting the number of auxiliary requests and may lead to their rejection where they would overburden the procedure.
On the merits, the Court found no sufficiently certain direct infringement. It held that direct infringement of a device claim generally requires that the allegedly infringing product already fulfils all claim features at the time of the alleged act of infringement, such as offering or placing on the market. In the present case, the Court found that the accused system was only programmed by medical personnel after delivery and that the claimant had not demonstrated that the delivered product necessarily fulfilled the claim features. The Court also rejected the argument that acts of users could be attributed to the defendant under a “extended workbench” theory, noting that this would at least require that a claim-compliant configuration was the inevitable result of the instructions given.
The Court also rejected indirect infringement. While the objective requirements of Art. 26 UPCA were considered fulfilled, the Court found that the subjective requirement – intended use for patent infringement – was not established with sufficient certainty. The Court confirmed that the required intention may be inferred from objective circumstances. However, in the present case the claimant had not demonstrated that the product documentation clearly instructed infringing use, nor that infringing use was the only technically and commercially realistic use scenario. In the absence of such indicators, the Court concluded that the required degree of certainty for indirect infringement was not met.
