No. 145 - 25 August, 2026
Emboline v AorticLab – Court of Appeal, 17 August 2026, UPC_CoA_40/2026
Can a defendant make its counterclaim for revocation conditional upon the patent being found infringed? The Court of Appeal says yes.
Such option is particularly attractive where the defendant primarily relies on non-infringement and only needs revocation if that defence fails. If there is no infringement, there may be little reason for the defendant to obtain a decision on validity.
The possibility of such a conditional counterclaim is not entirely new. The Munich Local Division had already accepted it in the same proceedings. The Court of Appeal now confirms that result and clarifies its procedural basis.
The order of the CoA also highlights – as the first instance – an important practical limitation: a conditional counterclaim may avoid an unnecessary decision on validity, but it does not necessarily avoid the costs of the validity case.
The proceedings concerned an infringement action brought by Emboline against AorticLab and a counterclaim for revocation filed by AorticLab before the Munich Local Division.
AorticLab had originally filed its counterclaim unconditionally. At the oral hearing, however, it requested that the counterclaim be decided only if the Court found the patent infringed.
The Munich Local Division accepted this change. It ultimately found no infringement, with the consequence that the condition was not fulfilled and the counterclaim was not decided.
The case reached the Court of Appeal, which had to address, among other issues, the procedural consequences of this conditional counterclaim.
The Court of Appeal confirms that a counterclaim for revocation may be made conditional upon a finding of infringement.
Importantly, an infringement action and a counterclaim for revocation are separate actions. The condition therefore does not concern an event within the counterclaim itself. Rather, the counterclaim depends on the outcome of another action. The Court describes this as an “inter-procedural” condition.
This slightly refines the reasoning of the Munich Local Division in the same proceedings. The Local Division had already accepted the conditional counterclaim, but had treated the condition as “intra-procedural”. The Court of Appeal now makes clear that infringement and revocation are separate actions and that the condition is therefore inter-procedural.
The distinction does not change the result. Nothing in the UPCA or the Rules of Procedure excludes such a condition. The Court applies Rule 263.3 RoP by analogy. Making an existing counterclaim conditional merely limits the circumstances in which the Court is requested to decide it and does not worsen the procedural position of the patent proprietor. No particular justification is therefore required.
The conditional counterclaim also has an interesting consequence if the defendant succeeds on non-infringement.
The counterclaim remains pending. The Court must determine whether the condition has been fulfilled and deal with the procedural consequences, including costs.
This becomes particularly relevant on appeal. Infringement and revocation remain separate actions and must be treated accordingly. The conditional nature of the counterclaim does not merge them into a single action.
Perhaps the most interesting practical question is whether making a counterclaim conditional also saves costs.
The answer appears to be: no – or at least, not necessarily.
This had already become apparent in the Munich Local Division's decision in the same proceedings. Because infringement was denied, the condition was not fulfilled and the Local Division did not decide the counterclaim. Nevertheless, AorticLab had to bear the costs attributable to the counterclaim. The Local Division regarded these as unnecessary costs under Art. 69.3 UPCA because it was AorticLab's procedural choice to make the counterclaim conditional and thereby prevent a decision on validity.
The Court of Appeal's reasoning does not suggest that a conditional counterclaim can be used as a simple means of avoiding these costs. On the contrary, the Court expressly states that the parties must fully develop their submissions concerning the conditional counterclaim because they cannot know in advance whether the condition will ultimately be fulfilled.
Much of the work – and therefore much of the cost – of the validity case may thus already have been incurred before it becomes clear whether the Court will actually have to decide it.
The principal advantage of a conditional counterclaim may therefore lie elsewhere: it allows a defendant that successfully establishes non-infringement to avoid an unnecessary decision on the validity of the patent. That can be strategically valuable in itself. However, it should not be confused with an automatic cost-saving mechanism.
The order also contains useful guidance on the relationship between infringement actions and counterclaims for revocation on appeal.
Because they are separate actions, the procedural fate of one does not automatically determine that of the other. This distinction must also be taken into account when deciding what needs to be appealed and how the respective proceedings continue before the Court of Appeal.
At the same time, even a counterclaim that is subject to a condition must be fully pleaded. The possibility that the condition will never be fulfilled does not justify holding back arguments or evidence that would be necessary if the validity issue ultimately has to be decided.
