Below, Prof. Willem Hoyng provides his unfiltered views on the decisions that were published on the website of the Unified Patent Court (“UPC”) last week. His comments offer a unique insight into the UPC’s case law, as he chairs the Advisory Board of the UPC and participated in drafting the Rules of Procedure of the UPC.
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4 and 5 August 2025
Local Division Düsseldorf, 10x Genomics v Curio
UPC_CFI_140/2024, UPC_CFI_658/2025, UPC_CFI_657/2025
Confidential Information / Cost proceedings
Facts
The claimant requested a confidentiality order for its application regarding costs. The defendants do not dispute that these items are confidential. The claimant, however, opposes two suggested members of the confidentiality club. One is the defendant’s CEO, Dr. Fodor, because there is a rumour he is leaving the company, and the other is the patent attorney advising the defendant.
The JR
The Judge Rapporteur (JR) referred to the text of Rule 262A, which states, „whether the grounds relied upon by applicant for the order significantly outweigh the interest of the other party to have full access to the information and evidence in question,“ and granted the request. Access was given to the defendant’s Chief Operating Officer (COO) and Dr. Fodor (the CEO). The JR noted that rumours are not a valid reason to deny access. The patent attorney was denied access, because it was not considered necessary as the representatives of defendant had already access.
Comment
- It is important to note that this is not a R. 262.2 RoP request, so the public’s interest in transparency regarding the costs of UPC litigation is not a factor here.
- An agreement between the parties (or their representatives) to keep cost items confidential does not automatically mean that the Court will order so. This seems more relevant for public access confidentiality than in a R. 262A RoP case where only the interests of the party (which agrees to confidentiality) are at stake.
4 August 2025
Central Division Munich, UPM v International N&H
Further exchange of documents
Facts
In this revocation action, the claimant requested a further exchange of documents after the defendant’s rejoinder to correct incorrect statements and respond to new arguments. The defendant objected.
JR
The JR rejected the request. The JR’s reasoning was:
- You cannot expect the JR to be fully familiar with the case before the interim conference.
- The written procedure (front-loaded) is clearly outlined in the Rules of Procedure.
- R. 36 RoP (for further written exchanges) is meant for exceptional cases.
- You can respond to the rejoinder during the oral argument.
Comment
- Representatives should be aware of this. Unlike some national proceedings, you cannot file briefs right up until the hearing. The JR was correct that R. 36 RoP is intended for additional briefs in exceptional cases.
- It is worth noting the JR’s comment on the defendant’s response to the claimant’s R. 36 RoP request. Despite the JR’s instructions, the defendant’s response included further arguments about the case. This is, in effect, „contempt of the Court“. Such behaviour is unprofessional and not in the best interest of the client.
4 August 2025
Local Division Mannheim, Hurom v NUC
Request for penalty payment
Facts
The claimant asked the Court to impose penalty payments because the defendant had not fully complied with a court decision. The Court, on 22 July 2025, gave the defendant until 6 August 2025 to respond. On 29 July 2025, the defendant asked for a three-week extension. The JR granted a two-week extension.
Comment
- I believe the JR was very accommodating. A representative should advise a company that has been ordered to do something by the Court to immediately take steps after the judgment to comply as soon as reasonably possible and to the fullest extent. It does not seem that happened in this case.
- As I have said before, if the courts want to avoid these situations, it’s better to issue a decision that clearly states what penalty will be forfeited if the judgment is not complied with by a certain date. The Local Divisions in The Hague and the Nordic-Baltic Regional Divisions show how it should be done.
4 August 2025
Local Division Düsseldorf, Cup&Cino v Alpina
UPC_CFI_519/2024, UPC_CFI_47/2025, UPC_CFI_52/2025
Bifurcation?
Decision of the JR
The Court decided against bifurcation even before the end of the written procedure.
Comment
As previously mentioned, this is a very efficient approach. Representatives should state in their Statement of Claim and Defence whether they want bifurcation or not, so the Court can make an early decision. This should become the new rule after the revision of the Rules.
4 August 2025
Local Division Düsseldorf, Imusyn v BAG
TQJ in PI proceedings
Facts
This case involved a request for a preliminary injunction (PI). The defendant also raised the argument that the patent was invalid.
The Presiding Judge/JR
- In PI proceedings, the court must consider the patent’s validity and determine if it is more likely than not that the patent is invalid.
- Although a Technical Judge (TQJ) is mandatory for a case on the merits, the Court can always ask for one (see Article 8, sub 5, second sentence UPCA).
- Since there might also be a case on the merits, the Court believes it would be efficient to have a TQJ nominated.
- The Presiding Judge asked the President of the Court of First Instance to nominate a TQJ.
Comment
This makes sense when the PI is not very urgent and the technology is complex. There are, of course, some legal judges with strong scientific backgrounds, such as the two Dutch judges in the Local Division of The Hague and Judge Kupecz, who is also a qualified patent attorney. In pharmaceutical cases, they would certainly not need a TQJ in a PI case, and it would not cause a delay in their division.
4 August 2025
Local Division The Hague, Advanced Brain Monitoring v Philips
Amendment of case
Facts
The claimant’s Statement of Claim mentioned the B1 version of the patent, while a B2 version of the patent had already been issues after opposition. The claimant now wants to change this by filing a request for an amendment to the case to change it to the B2 version.
The JR
The JR found this request unnecessary, as the B2 version automatically becomes the valid version from the day of the grant. She allowed the replacement of the B1 version with the B2 version. The defendant did not object.
Comment
- This is a practical solution.
- The JR stated that the request to amend was devoid of purpose and that R. 360 RoP, though written for actions, should also apply to applications. That seems correct to me.
- However, I understand why the claimant asked for it: one could argue that the claimant was invoking a non-existent patent, making infringement impossible and causing the claimant to lose without an amendment.
4 August 2025
Local Division The Hague, Moderna v Genevant
Confidentiality
Facts
The defendant filed both unredacted and redacted versions of the Defence/Counterclaim for Revocation and requested a confidentiality regime for the redacted parts.
The JR
The JR asked the parties to agree on the content of the confidentiality order and the individuals from the claimant who would get access. The parties reached an agreement, and the JR issued an order as agreed.
Comment
This is a valuable lesson for all representatives who were trained in national systems where they were taught to contest and fight about everything. This case demonstrates that reasonable representatives can reach agreements on many procedural issues, including confidentiality, security for costs, and litigation costs. This benefits their clients, who will not have to pay for all these disputes, and saves the Court time to focus on the real issues. This „I disagree and fight as a matter of principle“ attitude can also be seen as a way to maximize earnings from a case, which, in my opinion, goes against a representative’s ethical obligations.
5 August 2025
Local Division Düsseldorf, Igus v Whale
Default
Facts
Igus started infringement proceedings on the basis of their unitary patent against Whale, a Chinese company. The Statement of Claim was served on an employee of the defendant during the Hannover Exhibition on 3 April 2025 (R. 271.5(a) RoP).
The defendant did not file a Statement of Defence.
The Court
- A default judgment can be delivered if:
a. claimant demands such judgment;
b. the defendant does not file a defence brief;
c. the period for raising a defence has expired and, given the service of the Claim, the defendant had sufficient time to react. - Service at an exhibition is possible if, during the exhibition, efforts are made to obtain orders for the allegedly infringing product — which is normally the case.
- Although R. 355 RoP does not specifically mention the situation where the defendant does not appear, this is clearly covered by Art. 37(1) of the EU Service Regulation.
- The facts put forward justify the remedy sought.
- The Court grants a default judgment.
Comment
- The Court notes that R. 355 RoP (the default provision in the Rules) does not mention the situation where the defendant does not appear in Court. This is correct, but the Drafting Committee of the Rules considered such situations to be clearly covered by the more general ground of “failing to take a step within the time limit foreseen in these Rules,” as the Court also does.
- Unlike some national courts, the UPC considers the case in detail before concluding that the remedy sought is justified by the facts. This is yet another reason — in addition to the front-loaded nature of UPC proceedings — for the claimant to present their case clearly and convincingly in the Statement of Claim
5 August 2025
Local Division Düsseldorf, Wonderland v Cybex
UPC_CFI_807/2024, UPC_CFI_334/2025
No bifurcation
The Court
The Court decides during the written proceedings not to bifurcate.
Comment
An early decision has, among other advantages, the early involvement of the Technically Qualified Judge. If the claimant indicates that they do not want bifurcation, and the defendant agrees in their defence, such an early decision can be made without hearing the parties.
6 August 2025
Local Division Mannheim, Warmcook v Hurom
Cost proceedings / Confidentiality
Facts
In cost proceedings, the applicant seeks confidentiality protection for the breakdown of hours worked. The total number of hours has already been submitted. The applicant argues this is, in any event, covered by attorney–client privilege.
The Court
- Unlike the Local Division Milan, the Court holds that confidential information belonging to third parties under Art. 58 UPCA can be protected, and that representatives qualify as third parties (thereby aligning with the Local Division Düsseldorf and the Central Division Paris).
- The breakdown of hours worked qualifies as confidential information.
- Restricting disclosure to only the (named) representatives is not possible unless agreed between the parties.
Comment
- As is well known, I am in favour of full transparency about costs so that every company (person) seeking representatives for an UPC case can see how much time is spent one what items with how many persons at which hourly rate for making an informed choice. As said before, these should not be the only criteria for a choice. Quality, experience as a litigator etc. are maybe even more important. This is not about public access, but access for the other party and their representatives — who should at least be able to judge whether the costs are reasonable and proportionate. Here, the claimant seems comfortable sharing the total hours with the other party’s representatives, but wants to keep the details as restricted as possible.
- However, regarding public access, the claimant had already obtained a R. 262.2 RoP order covering the total hours, meaning there is no transparency whatsoever.
- I am puzzled by the Judge-Rapporteur’s remark that, since a R. 262.2 RoP order had already been granted for the total number of hours and their division over the two cases, there was no reason to issue a R. 262A RoP order for the same totals. My understanding is that the claimant did not request such an order.
- This remark seems to suggest that obtaining a R. 262.2 RoP order (presumably at the time of filing) would also bind the opposing party to confidentiality, while still allowing them unrestricted access. Although practical, I do not think this is correct — R. 262.2 RoP concerns public access, and a party is not “public.”
- If you do not request a confidentiality order for your opposing party, they are free to divulge the information received. As a result, you cannot later request a R. 262.2 RoP order, since the information would no longer be confidential.
- When the Rules are revised, these provisions should be reconsidered.
- Until then, if you want something kept confidential, always request a R. 262A RoP order. Also if you have no problem that the other party gets full access to the information but want to make sure that the other party keeps the information confidential, you should ask at the time of filing a R. 262A RoP order. This ensures that the information remains confidential and that when later public access is asked you can invoke confidentiality. You can in my opinion also already ask such R. 262.2 RoP order at the time of filing the R. 262A RoP application.
6 August 2025
Local Division Düsseldorf, Sanofi v Amgen
Stay of proceedings
Facts
The claimants seek a stay of proceedings (R. 295(m) RoP) pending the outcome of the appeal in infringement proceedings before the Local Division Düsseldorf concerning a related patent.
The Judge-Rapporteur (JR)
- The JR states there are no significant differences regarding the infringement question and it is likely that the Court will therefore also dismiss this claim.
- If the Court of Appeal dismisses the appeal then claimant can still withdraw this case meaning that parties have not to spend more money on it.
Comment
This seems a logical decision and I do not understand why defendant objected. If they win the pending appeal the present case will also go away (claimant will then withdraw) without having to spend more money on it. If they continue and win (as the JR tells them) they have to face a further appeal case with costs. If they lose the first appeal, they will also lose the second appeal with far more costs than after losing one appeal.
6 August 2025
Central Division Milan, CNRS v EPO
Action against EPO decision (RoP 97)
Facts
After a European Patent was granted, the three proprietors applied for conversion to a Unitary Patent within one month.
The EPO noted that one proprietor’s address was incorrect. The rules for granting Unitary Patents require that certain formalities be completed, with a non-extendable one-month term to rectify deficiencies. The applicants corrected the address four days late. The EPO refused to grant Unitary effect, and the applicants appealed.
The Court
- Under R. 97 RoP, the standing judge should deal with the application within three weeks.
- The standing judge stated that although Art. 32(1)(i) UPCA provides that actions against the EPO should be heard by three legal judges, Art. 19 of the Statute allows a single judge to act in urgent cases.
- Emphasising legal certainty, the judge rejected the request for review of the EPO’s decision.
Comment
A desperate effort to get a non-extendable term extended by patent attorneys who should call their insurers.
6 August 2025
Local Division Mannheim, Dish v Aylo
Cost proceedings
Facts
Defendants ask during the infringement proceedings for a decision on costs which they have made in a successful defence in an appeal by claimants of a decision in which claimants were ordered to provide security for costs.
The Court
- Costs for procedural orders cannot be claimed in separate cost proceedings. They are dealt with in the cost proceedings for the case on the merits.
- The Court has already ruled on costs for the merits: claimants bear the court costs of the infringement case, defendants bear the costs of the revocation, and each party bears its own remaining costs. The Court chose not to go into further detail on each procedural incident, and it is free to do so.
Comment
A wise decision. If the Court had to assess precise costs for each procedural incident, the UPC would need twice as many judges!
8 August 2025
Local Division Mannheim, Sunstar v Ceracon
Amendment of claim
Facts
Infringement action with a counterclaim for revocation.
The defendant (claimant in the counterclaim) filed the counterclaim on 6 March 2025 and introduced a new allegedly novelty-destroying document on 8 May 2025. On 9 May 2025, the defendant in the counterclaim filed its answer to the counterclaim and a request to amend the patent.
The oral hearing is scheduled for 10 February 2026.
The JR dismissed the application. The claimant in the counterclaim sought review by the full panel.
The Court
The application for review is rejected.
Comment
By now, representatives should know that a request for review of a JR’s order — especially when the JR has already informally discussed it with other panel members — is almost never successful. This review possibility should be removed from the Rules, leaving review via leave to appeal as the only route.
– All comments above are Prof. Hoyng‘s personal opinions –