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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21 July 2025 (delivered 18 July 2025)
Nordic Baltic Division, Edwards v Meril
Settlement
The Court
The case was settled, and the parties asked the Court to confirm the settlement, enter the redacted version of the settlement agreement in the register, and reimburse 20% of the court fees. The Court granted the request.
Comment
- The fact that the redacted version of the agreement is placed in the Register means the public cannot challenge the confidentiality, as is possible under R. 262 RoP. This is in accordance with R. 365.2 RoP.
- The Court specifically states that the agreement may be enforced as a final decision of the Court and orders the Registry to provide, upon request, the enforcing party with an authentic copy of the enforceable decision.
21 July 2025
Local Division Mannheim, Malikie v Discord
Harmonization of time periods
Facts
Defendants submitted their counterclaim for revocation in their defence brief and uploaded a “reference brief” in the revocation workflow, which refers to the brief filed in the infringement action. The reference brief was served on 2 July 2025, and the defence with the counterclaim for revocation was served on 10 July 2025. The claimant now requests the same term for their answer to the counterclaim for revocation as for their reply.
The Court
The request is rejected. The Court had already indicated that the term for the answer to the counterclaim only starts to run after the claimant has obtained full knowledge of the counterclaim for revocation, which was when the defence brief was served (10 July 2025), and not when the reference brief was served (2 July 2025).
Comment
Why bother the Court with unnecessary requests? The Court had already stated that 10 July 2025 was the starting date of the period for the answer to the counterclaim. Moreover, it is a general principle that a period starts to run only after a party has full knowledge of the content of the submission to which it has to respond.
21 July 2025
Central Division Paris, Sibio v Abbott
Revocation action
Facts
Sibio filed a revocation action against Abbott’s patent for an insulin pump, asserting the patent contains added subject matter and lacks novelty and inventive step. After the oral hearing in the revocation action in Paris, Sibio also filed a counterclaim for revocation in the infringement action in The Hague, which was started by Abbott. Sibio apparently did so in the hope of avoiding a decision from the Central Division, as R. 75.3 RoP states that if a counterclaim for revocation is filed in infringement proceedings, a revocation case between the same parties in the Central Division is stayed.
In PI proceedings, The Hague Division refused to grant a PI because it thought it was more likely than not that the patent was invalid for added matter. The Court of Appeal reversed that decision and granted the injunction.
The Court
- Because the deliberation after the oral argument has already taken place in this revocation action, the court does not apply R. 75.3 RoP, as this would be contrary to paragraph 4 of the preamble of the Rules citing the principles of flexibility and efficiency.
- The Court rules that a general indication in the Statement of Claim that all the prior art is used to challenge validity/inventive step is not sufficient for making specific arguments based on these documents as late as the reply.
- The Court also rules that if one invokes the invalidity of the whole patent, including the dependent claims, one should also mention the grounds for invalidity for such claims in their Statement of Claim.
- The defendant did not file its Application to amend the patent in the special workflow for such an application but included the application in its Statement of defence against the counterclaim for revocation. The claimant’s argument that the application should not be considered is rejected. Such a right to amendment is an essential right for the defence against a revocation action (see Art. 138(2) EPC).
- The Court provides an interpretation of the claims of the patent following the legal framework of the Court of Appeal (see the decision in Nanostring v 10x Genomics of 26 February 2024, UPC_CoA_335/2023 and 13 May 2024 in Vusiongroup v Hanshow).
- The parties agree on the qualifications of the skilled person.
- What constitutes common general knowledge is subject to evidence; the burden of proof lies with the party invoking it.
- The claimant argued «added matter» with respect to claim 1 and effectively raised the same arguments as it did as defendant in the PI proceedings. The Court of Appeal rejected these arguments, and although the Court states that the decision of the Court of Appeal is not binding, the Court stated: ”it cannot be disregarded, considering the authority of the issuing body».
- The parties referred to the «gold standard» of the Boards of Appeal, and the Court states that strict compliance with the gold standard is of paramount importance.
- The Court considers that an intermediate generalization (importing one or more features of an embodiment into the claim while omitting one or more other features of that embodiment) is justified in the absence of any clearly recognizable functional or structural relationship among the imported feature(s) and the omitted feature(s).
- A change of wording does not necessarily result in added matter.
- With respect to novelty: the fact that all the elements of a claim are disclosed in one prior art document does not automatically lead to novelty-destroying prior art. The Court states that a claim only lacks novelty over a prior art document if all claimed features are directly and unambiguously disclosed in combination in said prior art document (taking into consideration common general knowledge as well as implicitly disclosed subject matter).
- The panel refers to its own case law (CD Paris, 3 July 2024, Abbott v Dexcom, UPC_CFI_230/2023): “Inventive step is assessed in terms of the specific problems encountered by the person skilled in the art.” “It is first necessary to determine one or more teachings in the prior art that would have been of interest to a person skilled in the art who, at the priority date of the patent, was seeking to develop an invention or process similar to that disclosed in the prior art. Then, it must be assessed whether it would have been obvious for the skilled person to arrive at the claimed solution of the underlying technical problem on the basis of a realistic disclosure of the selected prior art documents”.
- An assessment of inventive step can be based starting from two different starting points.
Conclusion
The Patent is valid and the revocation action is dismissed.
Comment
- The Court ignores R. 75.3 RoP, and I think rightly so. That rule includes the wording “The panel […] to hear the revocation action”. In this case, the hearing already took place. In other words, all the work had already been done. Under those circumstances, it would be very strange to give a Local Division the possibility to do the whole revocation again. That would be a waste of UPC resources.
- Of course, a Court is not going to throw out an important defence (here, filing auxiliary requests) because of failure to file in the correct workflow! Raising such an argument is useless!
- As to added matter, the Court follows the Court of Appeal in the way it applies the gold standard. In my opinion, the Court (very different from the EPO) is not trying to invalidate the patent with an extremely strict approach but has a more positive attitude towards keeping the patent (which may be granted for a meritorious invention) alive by having a more realistic view on what the skilled person, with a mind willing to understand, will learn from reading the application(s). Such an application of the gold standard is more in line with the goal of the patent system and does not create legal uncertainty for reasonable skilled persons.
- In line with my previous remarks, the Court states that if one wants to have the whole patent revoked, one will also have to state in the Statement of Claim for what reason(s) the dependent claims are invalid. The patent owner has to respond to these allegations, and the end result may be that only one or two dependent claims survive. No auxiliary request should be necessary for defending such dependent claims (contrary to what the Local Division in Mannheim held).
- Note that the Court did not apply the problem-solution approach for assessing inventive step, but applies a more realistic approach that is closer to Article 6 EPC.
- My conclusion: a well-reasoned judgment!
22 July 2025
Court of Appeal, Philips v Belkin
Claiming costs
Facts
The Court of Appeal had decided, in the appeal of a decision of the Court of First Instance with respect to penalty payments, that Belkin had to bear 65% and Philips 35% of the costs of the Appeal. Philips started cost proceedings on 2 July 2025 at the Court of Appeal but withdrew its application on the same day and filed the proceedings in the Local Division of Munich.
The JR
Accepts the withdrawal (R. 265 RoP) without hearing Belkin because, even without withdrawal, there would have been no decision as the Court of Appeal is not competent.
Comment
Philips made a mistake which it corrected the same day. A lesson for all representatives: If you want costs for appeal proceedings (and you do not have an agreement with your opposing party!), then you have to file in the Division which dealt with the case in first instance.
22 July 2025
Central Division Milan, EOFlow v Insulet
Revocation / infringement / default
Facts
Insulet applied for ex parte injunctions in July 2024 in the Central Division and Local Division of Milan for infringement, which were rejected. In October 2024, EOFlow started revocation proceedings (the present case). In December 2024, Insulet filed its defence and a conditional request to amend the patent and a counterclaim for infringement. On 30 April 2025, the Court of Appeal overturned the decisions of July 2024 and issued the preliminary injunction request of July 2024. EOFlow was ordered on 11 April 2025 to pay a security deposit of € 500,000 for costs in the revocation case. On 13 May 2025, EOFlow informed the Court that it would not pay the security deposit. Insulet asked for a decision by default.
The Court
- R. 355.2 RoP means that a claim for a decision by default against a defendant can only be granted if the facts supporting the claim are sufficiently substantiated. The Court decides that this is not the case with respect to the infringement. So, it cannot issue a decision by default.
- With respect to the revocation case, the Court states that EOFlow (a claimant) failed to provide security, and that the action of EOFlow will therefore be dismissed. As the Court could not decide on default in the infringement case, it scheduled a hearing on 25 June 2024 to discuss infringement. Following that hearing, the Court concluded that the infringement case was well-founded. The Court also decides on costs, including on the costs in the PI proceedings (first instance and appeal). The Court states that PI costs should only be reimbursed at the end of the main proceedings and, if main proceedings are filed, are not separately reimbursable.
Comment
- A very lengthy, detailed decision.
- The Court goes to great lengths explaining the ratio of the default provisions in R. 355 RoP and explains that it does not have enough basis for a default decision on infringement. But instead of then refusing a default judgment and dismissing the infringement action, the Court holds an oral hearing to decide on the infringement (in a very elaborate judgment) and grants the infringement claim.
- I am rather surprised by such an exercise. The Court of Appeal in the PI proceedings had already ruled that there was infringement in a rather elaborate decision. I do not read R. 355 RoP as requiring more than what the claimant states can justify the claim. I do not think that the Court has to verify if the facts are as the claimant states, except if they would prima facie be incorrect. If, as in this case, the Court of Appeal, in PI proceedings found, after having considered the arguments of the defendant (who at that time was still participating in the proceedings), that it is more likely than not that the defendant is infringing, then that seems enough for a default judgment if the defendant is not putting up security for costs.
- In my view, it is incorrect to consider the PI proceedings part of the main proceedings and that costs for the PI proceedings can only be claimed after the main proceedings. PI proceedings can be started without the main proceedings pending (which is different from certain national systems), so why do I have to wait to claim costs when I prevail? There is no risk, as the Court apparently thinks, that this can lead to double payment for the same work. Costs for work already done for the PI proceedings can, of course, no longer be claimed for the main proceedings.
22 July 2025
Local Division Paris, Tiru v Maguin
Bifurcation / Stay
Facts
On 18 February 2025, Tiru starts infringement proceedings against Maguin and Valinea Energie on the basis of EP 578. On 13 May 2025, Veolia started revocation proceedings against Tiru with respect to Tiru’s EP 578. With their defence in the infringement proceedings, Maguin and Valinea filed a counterclaim for revocation. Tiru asks the Court to bifurcate the infringement cases and to send the counterclaim for revocation to the Central Division in Paris and to join and stay the infringement proceedings.
The Court
The Court joins the infringement proceedings, bifurcates, and refuses the stay.
Comment
- In this case, the joining of the infringement proceedings seems to make sense as the two infringement proceedings concern the same product (an oven). One of the defendants is the supplier and the other the user.
- The bifurcation also seems to make sense as the revocation procedure pending before the Central Division will – in all likelihood – be decided before the infringement case, and the arguments in the revocation procedure are more or less the same (according to the Court).
- The Court also orders the parties in the infringement proceedings to base the proceedings on the claims defended during the revocation proceedings and refuses the stay. So, in principle, the claimant (patentee) should have a decision within 14 months.
- However, the alleged infringers seem to have tried to avoid the Paris Local Division dealing with the invalidity by having a different related company filing the revocation action. They themselves could not invoke the revocation in the Paris Central Division because of UPCA Art. 33(4). In fact, this kind of behavior should, in my opinion, not be successful. The normal way of conducting proceedings is to have the whole case heard by the same Division. That is also the basis for the provision of Art. 33(4) UPCA.
- Although the Paris Court has done everything to avoid delays, it is not excluded that the case in two different Courts, with infringers who may only be interested in trying to complicate and delay the proceedings, runs into complications.
- Of course, what should happen in fact is that the Paris Court hears the whole case and that the later revocation case is also sent to the Paris Local Division to avoid double work for the UPC. However, that is impossible under the UPCA. What the Court can do, which sees such a manoeuvre, is that the Local Division decides the whole case and the Central Division stays the revocation case until the outcome of the case in the Local Division. Also in this case at hand, that would have been my preference, instead of accommodating the alleged infringers circumventing Art. 33(4) UPCA.
22 July 2025
Munich Local Division, Nanoval v ALD
Review of evidentiary seizure
Facts
- 3 February 2025: the Court orders an evidentiary seizure and inspection and states that the 20 working days/31 calendar days for the start of proceedings begin to run from 28 February 2025.
- Contrary to the expectation of the Court, the report of seizure and inspection did not become available before 28 February but only on 19 March 2025.
- On 18 March 2025, the Court stated that the date of the start of the 20 working days/31 calendar days would be adapted to the moment claimant obtained the report of the seizure and inspection.
- On 2 April 2025, claimant received the complete report. It started proceedings on 3 May 2025.
- The defendant argued that (see R. 9.4 RoP) one cannot extend the 20/31-day period and that 3 May 2025 is more than 31 days anyway.
The Court
- The 31-day period starts to run the day after 2 April. 3 April until 3 May is 31 days. So this was timely.
- The defendant has not timely demanded a review of the decision of the JR about the new starting date of the 20 working/31 calendar days period, which means that that decision is definite.
- R. 9(4) RoP is in any case not applicable as the Court has not extended the period of 20 working days/31 calendar days but only ordered a new starting date.
- The representative has falsely presented an earlier decision of the Division. This is the second time that the representative is not truthful, and the representative receives a last warning.
Comment
- The Court found a clever way to send the defendant home, and an experienced representative would have seen that coming!
- However, it is a good lesson for the Court that it is better (as the JR did the second time) to not mention specific starting dates but (in a case like this) certain events which define the start of a certain period within which a party has to take action.
- The representative of the defendant better argues the case «wahrheitsgemäss» (in accordance with the truth) from now on, as he may be removed from the case next time (R. 291 RoP)!
23 July 2025
Local Division Mannheim, Fuji v Kodak
Enforcement
Facts
The claimant states that the defendants do not comply with the decision of the Court of 2 April 2025 although all formal requirements are met. Respondents say that claimant did not make it sufficiently clear that it intended to enforce the decision. They had only asked the Court to issue a warning, which the Court refused. Moreover, no translation of the decision into German was provided.
Order of the full panel
- A penalty is imposed for the past (€ 100,000).
- Moderate daily penalties are imposed during a certain period to catch up with the obligations which should already have been performed (€ 2,500).
- A drastic penalty is imposed if, after a certain period, Kodak still does not comply with the decision and orders of the UPC (€ 10,000 a day).
- No prior warning is necessary before enforcing.
- No translation into the language of the defendant is necessary. Translation is only necessary if execution has to take place with the help of national authorities.
Comment
The Court is fed up with the delaying tactics of Kodak.
Lessons for representatives:
1. Formulate in your statement of claim exactly what you want with respect to what you seek (such as recall, destruction, and information), specifying, for example, within what period what kind of letter should be sent for recall, what kind of evidence should be given within what period that defendant has complied, and what penalties are forfeited.
2. Be very reasonable in your demands and motivate why you need these measures and why they are reasonable.
3. If, as a (e.g., German) representative, you have never formulated such requests, ask for the help of a Dutch representative who is used to formulating such orders.
4. You cannot ask for security and confidentiality after the judgment in the execution phase.
5. Unless stated differently in the judgment, after compliance by the claimant with R. 118.8 RoP and after service, the judgment is immediately executable; you cannot await further warnings. (Note that the German representatives and commentators did not realize that the UPC is different from their national system.)
6. If you are the claimant and the Court has not set precise periods (and further instructions) for compliance with the judgment, be reasonable (and even better, try to agree with the defendant).
23 July 2025
Local Division Düsseldorf, Qiagen v bioMérieux
Time periods
Facts
The defendants lodged the Statement of Defence/Counterclaim for Revocation on 10 June 2025 and asked for confidentiality. On 16 June 2025, the JR provisionally gave access to three representatives of the claimant. On 15 July 2025, she gave a definite order granting access to the teams of the representatives and certain specific persons of the claimant. The claimant now asks for an extension for its reply/defence to the revocation action until 15 September 2025. The defendants consented.
The JR
Grants the request.
Comment
This is now pretty standard: time periods for submissions start to run after the representatives (and the persons of the party who are given access) have received the unredacted version of the submission to which they have to react. When the Rules are revised, this should probably be put into the Rules.
23 July 2025
Court of Appeal, Visibly v Easee
Withdrawal
Facts
Cases in first instance and appeal (of the security order) were stayed because of Easee’s bankruptcy. Visibly filed permission for withdrawal of the appeal. Easee consented.
The Court of Appeal
- A stay does not prevent withdrawal.
- The Court states that it fails to see the interest of the parties in deciding Visibly’s application to restrict access to certain specific information. In a preliminary order, the JR had already ordered the representatives of Easee to keep certain information identified by Visibly as confidential.
- A decision on R. 262.2 RoP (about confidentiality towards the public) is generally not made until an application is made for access.
- Withdrawal permitted. Case closed.
- Reimbursement of 60% of appeal fee.
Comment
- The representatives of Easee remain bound to confidentiality on the basis of the provisional order of the JR. There is indeed no reason why this has to be confirmed in a definite order if parties do not ask for that but are happy with the provisional order.
- A decision on R. 262 RoP is indeed also not necessary. When a member of the public asks for access, Visibly gets two weeks to object.
24 July 2025
Local Division Munich, Cilag v Rivolution
Translation
Facts
The claimant informs the Court that they will come to the oral hearing with two translators who will speak into a microphone into the headset of the persons needing translation.
The JR
The translators are allowed to participate in the overflow room.
Comment
- Apparently, the hearing room does not have cabins for translators. Experience teaches that such “whisper” translators in the hearing room are a nuisance for the representatives (unless such representatives do not have good hearing!) because if you argue as a representative, you hear a soft echo of what you just said in English. That problem does not exist if the translators (as ordered here) sit in the overflow room, assuming the headsets of the users are not as loud as the headsets of some young people who listen to music!.
- All this was necessary because the case was filed in German! Except if Rule 14.2 (2) RoP applies (the German defendant is only infringing in Germany), there was no reason not to file in English. At least all UPC judges master English. Different from the UPC judges, one can be a representative without any knowledge of English, without any knowledge of the Rules of Procedure, and even without having ever conducted a patent case in a court of law, and we have seen cases where this leads to suboptimal results, to say the least.
24 July 2025
Court of Appeal, Otec v Steros
Further written submission
Facts
Steros obtains a PI against Otec in first instance. Otec appealed and filed its Statement of Grounds. On 15 July 2025, Steros filed its response. On 17 July 2025, Otec applied to be allowed a further written submission because Steros introduced several new facts, including experiments, and to be granted three weeks to lodge such further written pleadings.
The JR
Due process requires a further statement as it is undisputed between the parties that Steros conducted a new test and produced a new witness statement. The Court grants Otec two weeks to respond.
Comment
- The JR clearly stated that the Court of Appeal may not accept the new arguments (including test and witness statement), and indeed, in principle, the appeal is based on the facts and evidence submitted in first instance (see R. 222 RoP).
- I have not seen the response of Steros and do not know if they have justified the introduction of new test and witness declarations by arguing the reasons mentioned in R. 222 RoP. It remains to be seen what the Court of Appeal will do with respect to R. 222 RoP in PI proceedings. Can a claimant who won PI proceedings in first instance improve their position in response to an appeal with new facts (and in this case: tests and witness statements)?
24 July 2025
Local Division Mannheim, ZTE v Samsung
Value of the litigation
Facts
On 20 June 2025, the Court stated that the value of the counterclaim in the SEP case should be set.
The JR
- The JR disagrees with Samsung that the FRAND counterclaim is only a defence against the invoked patent and should have the same value as the infringement action. The fact that in the national Munich court, without a FRAND counterclaim, you are considered unwilling is irrelevant and, moreover, has nothing to do with the UPC. This is so because the case is not about a license under the patent invoked. The counterclaim seeks a much wider license, as is usual in FRAND cases.
- The fact that the FRAND counterclaim is not mentioned in the fee basis does not mean that it is free from court fees.
- The fee limitation for a counterclaim for revocation is not applicable. That fee limitation is there for a different reason (i.e. not to deter the defendant in infringement proceedings from filing a counterclaim).
- The order of 20 June 2025 is confirmed.
Comment
It seems to be a no-brainer that if a counterclaim seeks a FRAND license under standard essential patents reading onto a certain standard, the value is considerably higher than that for the one patent which is invoked. So the JR is right to stick to his guns!
24 July 2025
Court of Appeal, Hanshow v VusionGroup
Reimbursement
Facts
Hanshow withdrew its revocation case before the Central Division in Paris. The Central Division, fixing the value of the litigation at € 2,500,000, ruled that Hanshow would have to pay the costs. Hanshow appealed. Subsequently, the parties settled. Hanshow requested the withdrawal of the appeal, stated that parties would bear their own costs, and asked for a reimbursement of 60% of the appeal fee. Vusion agreed.
The Court
The Court allows the request.
Comment
The Court repeats that if parties agree on costs, it does not have to make a cost decision, as R. 265.2(c) RoP seems to require.
24 July 2025
President of the Court of Appeal
Registration as a representative
Facts
An Italian Patent attorney wants to become a representative. He holds a certificate from the Technical University of Milan which he obtained before the start of the UPC.
Decision of the Registrar
The Certificate gave the possibility to register during one year after the start of the UPC. So the application has to be refused.
The President
Confirmed the decision.
24 July 2025
Local Division Düsseldorf, Truma v Can
UPC_CFI_512/2024; UPC_CFI_794/2024
Settlement
Facts
Truma starts infringement action against Can. Can answers and files a counterclaim for revocation. Before the end of the written proceedings, parties settle. Both parties request withdrawal ex R. 265 RoP without a cost decision and return of court fees.
The Court
Allows the withdrawal and orders to reimburse 60% of the court fees after setting the value of the litigation for the infringement and revocation case at € 500,000.
Comment
As said before, R. 265 RoP is not written for effectuating a settlement, and I still do not understand why this complicated way (involving the Court) is necessary and why the parties cannot just confirm with the Registrar and the Registrar then deals with paying back the fees. When the Rules are revised, this may be revised.
24 July 2025
Court of Appeal, Hewlett Packard v Lama
Settlement
Facts
The Paris Local Division has ruled that one of the two patents which Hewlett Packard had invoked against Lama is invalid and the other patent infringed. Both parties appealed. Parties reached a settlement.
The Court of Appeal
Allows the withdrawal of the cases by both parties ex R. 265 RoP.
Comment
This means that Hewlett Packard’s patent which was revoked by the Paris Local Division remains valid!
25 July 2025
Local Division Düsseldorf, TRUMPF v IPG
No bifurcation
Decision
Early decision not to bifurcate and to ask for a Technical Judge.
Comment
R. 37.1 RoP states that as soon as possible after the written phase, the Court should decide whether to bifurcate or not. However, a better action (as the Düsseldorf Division does in this case) is to make that decision as early as possible because that makes it easier to set dates for the oral hearing (and interim hearings) and the JR has the opportunity to involve the TQJ with respect to early decisions of a technical nature.
25 July 2025
Local Division Brussels, OrthoApnea and Vivisol v Jef Nelissen
Costs
Facts
Nelissen lost in first instance infringement proceedings and had to pay costs. Nelissen appealed and the cost proceedings were stayed. Nelissen withdrew its appeal. The cost proceedings (with respect to the first instance) were continued. The total costs according to the claimant were € 480,751.37. The cost ceiling for recoverable costs in this case is €38,000. The claimant requests an increase of the ceiling by 50% because of the complexity and the use of several languages and a further increase for costs other than the costs of representatives by € 35,814 (the Court states that claimant made an addition mistake (sic) and that the amount is, in fact, € 36,089.77). Defendant states that they should pay nothing because of equity, lack of evidence, and unreasonableness.
The JR
- Notes that no costs had been demanded for the case in appeal.
- Costs are facts that must be proven if disputed.
- Refers to the ceiling decision and states that a request for increase had to be made as soon as possible in the proceedings.
- Refuses the increase of the ceiling because the request of the claimant is late.
- Costs incurred for requests which have been refused cannot be claimed.
- Claimant has to prove that the costs for the representatives have been incurred and borne by the claimant.
- Travel costs for representatives cannot be claimed separately from the ceiling. They are included in the ceiling for the costs of representatives.
- The UPCA and the Rules of Procedure do not provide for interest costs.
Decision
€ 41,656.64 has to be paid by the defendant.
Comment
- In the Brussels Division, you can proceed in four languages: English and the three official languages of Belgium: Dutch, French, and German; the Presiding Belgian Judge shows this by providing a long multilingual headnote.
- For a case with a value less than one million Euros, the claimant spent about € 450,000 in costs for his lawyers!
- In this case, we do not see the exaggerated application of confidentiality rules. We notice that the claimant has spent on lawyer’s fees two yearly incomes of Mr. Nelissen, an orthodontist. We also see in this case the need for cost ceilings. It would not have been reasonable to have Mr. Nelissen paying the full amount of costs incurred by the claimant, and more generally, small businesses would not be able to defend themselves with such a cost risk.
- Lessons for representatives (all assuming that the Court of Appeal will not rule differently in the future):
a. If you want an increase of the cost ceiling, then submit a (motivated) request as soon as possible (e.g., already in the Statement of Claim).
b. Make sure that you can prove that indeed the claimant (and not, for example, the parent company) has paid the amount you claim for representation.
c. Travel and lodging of the representatives are included in the cost ceiling.
d. If you lose a case but have won some procedural battles during the case, argue that you do not have to pay the costs for such battles. I add: I am not sure that the Court of Appeal is going to agree with this rule.
e. Realize that the making of samples, carrying out experiments, etc., which you (in the end) do not use, will not be reimbursed. - Lesson for the Registrar:
a. If you, in accordance with EU privacy rules, black out the names of the parties, then make sure you also do that in the publication note. It does not make sense to delete the name of Mr. Nelissen in the decision but then publish it in the publication announcement.
b. It is clear from this decision and elaborate headnote that the Brussels Division had sufficient time to deliver a thorough decision. Certain German Divisions would not be able to do this because representatives overload them with cases. Recently, I noticed a request from such a Division (see order of the Local Division Munich of 22 July 2024 UPC_CFI_465/2025) to the parties not to ask for a change of language to English because that would make the case more time-consuming, while for the neutral observer, it was clear that such a case should have been dealt with in English. Much better to start such a case in a Division like The Hague where the judges do not have this problem. They are less busy and master English (almost) at the level of a native speaker! If representatives nevertheless continue overloading German Divisions (while there is no necessity to file in Germany) such Divisions should – in the interest of the UPC system “request” parties to file in another non-German Division. Like in the case referred to above, representatives will in all likelihood follow such “request”, certainly if they are told that if they insist, their case can take much longer than 14 months.
29 May 2024 (late published)
Central Division Paris, Lindal v Rocep
Auxiliary requests
Facts
Revocation action. The claimant states that the patent is invalid for lack of industrial applicability (claim 1 and all dependent claims, or at least claim 5), lack of sufficient disclosure (claim 1 and all dependent claims, as well as claim 8 and all claims dependent on claim 8), lack of novelty (claim 1 and 2 to 4 and 11 to 14) and lack of inventive step (claims 5 to 10 and 15, of claim 1 and of claims 2 to 9 and 11 to 15).
The defendant files three auxiliary requests.
The Court
- For the claim interpretation the Court refers to Cour of Appeal 26 February 2024 UPC_CoA_385/2024 (Nanostring v 10x Genomics) (See also Case Law of the Court of Appeal of the UPC 2023-2024, p. 21).
- Parties did not extensively address the person skilled in the art. The Court does so itself.
- The Court interprets Art. 57 EPC (industrial applicability) in the light of the Case Law of the Board of Appeal of the EPO in T 0541/96 concerning an inventions that do not “comply with the accepted laws of physics”.
- Claim 1 does not lack industrial applicability.
- Claim 5 does lack industrial applicability and is invalid.
- As the patent cannot be maintained as granted, the Court addresses the auxiliary requests.
- The first auxiliary request includes the features of claim 10 in claim 1. Consequently claims 4 to 7, 10 and 11 are deleted and the dependent claims re amended accordingly. As the request deletes claim 5, it overcomes the invalidity of claim 5.
- Claim 1 of the auxiliary request is sufficiently disclosed.
- Original claim 8 (now 4) is also sufficiently disclosed.
- Claim 1 of the first auxiliary request is novel. This means that all (remaining) dependent claims are novel.
- Claim 1 of the first auxiliary request is inventive which means that all dependent claims are inventive.
Comment
- The result of this case is that the patent is maintained on the basis of the first auxiliary request with a claim 1 which is (also according to the Court) severely limited.
- However, the original (far broader) claim 1 was never held invalid. This is a rather unsatisfactory result and seems also to violate Art. 138.2 EPC. This all is the result of how the patentee formulated according the Court the condition under which it submitted its auxiliary requests. See consideration 5 of the judgment: “The defendant requested the Court to reject the claimant’s action and maintain the patent as granted, in the alternative, the patent to be maintained on the basis of the claims of the first, second and third auxiliary requests filed thereon.” The consequence of such formulation was that when claim 5 was invalidated without any further decision about the validity of the original claim 1, the Court had to go to the auxiliary requests.
3. I cannot predict if the broad original claim would have been upheld but I strongly recommend patent attorneys not to rely on possible EPO practices but to team up with an experienced patent litigator, who would have certainly advised to a different approach with respect to the auxiliary requests.
– All comments above are Prof. Hoyng‘s personal opinions –
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