UPC Unfiltered, by Willem Hoyng – UPC decisions week 05, 2026

13 January 2026 (late published)

Local Division Munich, Heraeus v Vibrantz

UPC_CFI_1624/2025

Reestablishment of rights / costs

Facts

1. On 10 October 2025, the Munich Division ruled that the revocation of the German part of the European patent by the highest national court in Germany was a bar to proceeding with the revocation action for Germany, as the patent for Germany had been invalidated by a final decision of the German national court.
2. The Munich Division maintained the patent for the other UPC countries in an amended version.
3. It dismissed the infringement action.
4. It ordered the defendant to pay 40% of the costs of the proceedings, while the claimant was ordered to pay 60%.
5. The value of the claim and counterclaim was set at EUR 1 million.
6. The defendant asked for costs in cost proceedings, further arguing that the claimant could not ask for costs anymore because the claimant’s request for cost proceedings was submitted too late.
7. The claimant asked for a reinstatement of rights in the event that it could not claim compensation (offsetting its claim for costs against the claim of the defendant).

The Court found that

1. Re-establishment of rights (also in cost proceedings) should be decided by the full panel, given the French and English language versions of the Rules of Procedure (which speak of the “authoritative panel”) and the importance of such a decision.
2. The majority of the panel granted re-establishment of rights because the reason for missing the deadline was the claimant’s (mistaken but until now undecided) legal assessment that it could offset its claim for costs against defendant’s claim for costs.
3. The majority of the panel is of the opinion that, if a cost ratio has been determined, both parties are “successful” and therefore entitled to claim their costs in cost proceedings. The possibility to comment on an application for costs (R. 156.1 RoP) cannot be used to offset one’s own costs.
4. Mr. Brinkman, the foreign legal judge on the panel, disagreed. He considered the reinstatement of rights to be inadmissible, ruling that when asked for a comment on the defendant’s cost application, the claimant can offset its claim against that of the defendant.
5. He argued that, in particular, Article 69(3) UPCA and also R. 156.1 RoP, render offsetting not only possible, but mandatory. In response to the majority, which referred to R.151 RoP and state that cost proceedings must be initiated to obtain costs, he stated that “offsetting” does not constitute a request for a cost decision. He further referred to the fact that dealing with two requests would be unnecessarily burdensome, and referred to the “flexibility” mentioned in the preamble of the Rules of Procedure, which does not call for such a narrow interpretation of the Rules in this case.

Comment

1. Is this a clash of two legal traditions? The more liberal Dutch attitude to the law on the one hand and the more literal German attitude of “Rechtssicherheit”?
2. The good thing is that the whole panel wanted a just result and reached it by a different route. In fact, there is no clash, as mentioned under 1, because the majority gave, in my opinion, a quite liberal interpretation of the “re-establishment of rights” provision!
3. In the end, I think it is more a question of the majority being accustomed to the traditional German approach to costs, whereas such judgments with percentages on both sides are not customary in the Netherlands.
4. We are now waiting for a decision of the Court of Appeal on how to deal with this. In the meantime, both parties should start cost proceedings in time to ensure that they are able to offset!

21 January 2026 (late published)

Court of Appeal, Valeo v Robert Bosch

UPC_CoA_4/2026

Competence Central Division

Facts

1. Valeo initiated an infringement action in French (the language of the patent) in the Paris Central Division against six Robert Bosch companies.
2. Two of the Robert Bosch companies are non-UPC companies (one Serbian and one Chinese).
3. The four Robert Bosch UPC companies raised a Preliminary objection, arguing that the Central Division is not competent. They asked the Central Division to refer the case against them to Düsseldorf and to rule that English should be the language of the proceedings.
4. The Central Division Paris ruled as requested.
5. Valeo appealed but did not fulfil the formalities. Following a request for correction from the Registry, the appeal was accepted on 20 January 2026. 

The Judge-Rapporteur (“JR”) of the Court of Appeal

1. The JR noticed that questions have arisen regarding the admissibility of the appeal.
2. For reasons of efficiency, the JR ruled that this question must be dealt with first.
3. He ordered the respondents to comment within 7 days and suspended the period for their defence.

Comment

1. A practical solution to first decide whether the appeal can be admitted.
2. It should be noted that, apart from the fact that Valeo apparently did not know the formalities for filing an appeal, they apparently also overlooked R. 21 RoP, which clearly states that if the Preliminary objection is allowed, an appeal must be filed on the basis of R. 220.1(a) RoP. However, Valeo appealed on the basis of R. 220.2 RoP, i.e., an appeal which requires leave for appeal.
3. However, as I have only seen the published decision, I assume that this raises a question: Article 73(2) UPCA states that, for appeal against orders not stated in Article 73(2)(a) UPCA, leave for appeal is required (or the appeal can be made together with the appeal against the final decision in the case).
4. You could argue that R. 21.1 RoP, which allows a direct appeal without leave, is contrary to Article 73 UPC. Ultimately, this would mean that, also in a case where a Preliminary objection is upheld, you would still have to appeal on the basis of R. 220.2 RoP.
5. The decision does not state whether Valeo was granted leave for appeal.
6. Here, we see a case of a French company that holds a European patent stated in the French language, and decides not to file in the Paris Local Division. The reason may be that in doing so they avoid having two revocation actions, one as a defence in the Local Division and another (by a different Bosch company) in the Central Division.
7. Valeo (or their French representatives) could sue companies that are not domiciled in the EU (Art. 33(1)(b) UPCA, third paragraph) in the Central Division. However, the other four Bosch companies were all located in the UPC territory. Under Article 33(1)(b) UPCA, first paragraph, it is stated that “An action may be brought against multiple defendants (…)”. However, the first paragraph deals with the competence (for one of the defendants) based on their place of residence. Therefore, this does not seem applicable to the third paragraph.
8. In other words, Valeo and its representatives’ filing in the Central Division backfired. The result was that they were confronted with two different proceedings, one in French and one in English!
9. Apparently, Valeo did not ask the Paris Central Division that, should it uphold the Preliminary objection, it should not to send it to the busy Düsseldorf Division but rather to the Brussels Division, since two of the Bosch defendants were domiciled in Belgium and no change of language would have been necessary.
10. The lesson is:
    1. know the formalities for an appeal;
    2. know how to appeal from a PO and if unclear take both routes;
    3. know the UPCA rules on jurisdiction. 

26 January 2026
Court of Appeal, petition for review of a decision by the Registrar 

Request to be entered as a UPC Representative

Confirmation of decision of the Registrar

Facts

1. The applicant is a patent attorney who wanted to be registered as representative (Article 48(2)UPCA) based on a course he completed in 1989.
2. However, Rule 12.1 of the Rules on the European Patent Litigation Certificate and Other Appropriate Qualifications requires that you must request such admission within one year of the UPCA coming into force.
3. The Registrar refused. 

Decision of the President of the Court of Appeal

Review was refused.

Comment

1. The applicant failed to use the grandfather clause, which permitted someone to become a representative on the basis of having completed a certain course before the entry of the UPC but you had to file within a year.
2. Although the same course is now recognized as a course allowing a patent attorney to become a representative (following Advice of the Advisory Committee and decision of the Administrative Committee), this is not a reason to rule differently.
3. This is fully understandable, as the programs of all courses (including existing courses, such as the one on which the applicant relied) have been reviewed by the Advisory Committee, and sometimes on the suggestion of the Advisory Committee have been changed.
4. I add as a warning: being admitted to the bar or having obtained an Article 48(2) UPCA certificate does not mean that you are an experienced litigator. We have seen several dramatic results of such a misconception to the detriment of the users of the system.

26 January 2026

Court of Appeal, Merz v Viatris

UPC_CoA_917/2025

Confidentiality regime

Facts

1. In appeal proceedings, for which the oral argument is set for 5 February 2026, Merz requested confidentiality of a new piece of evidence, for which they asked admission into the proceedings on 21 January 2026 (sic!).
2. They also asked that the exhibit not to be made accessible to the public (R. 262.2 RoP). 

The Court of Appeal

1. Merz lodged the request in the CMS invisible for Viatris without submitting a confidentiality request pursuant to R. 262A RoP at the same time.
2. A request under R. 262.2 RoP is not a request for such confidentiality. This request is usually made after a member of the public requests access.
3. Filing in invisible mode is contrary to the legitimate interest of the other party and will be changed by the Court to make it visible.

The Court

Refused the request according to R. 262.2 RoP at this time. 

Comment

1. The representatives did not know how to request confidentiality in the proceedings and confused R. 262A RoP with R. 262.2 RoP.
2. The Court of Appeal explains (again) how to request confidentiality in proceedings (R. 262A RoP). You must request confidentiality at the time of filing.
3. The Court also explains that, in general, a request under R. 262.2 RoP will be made if a member of the public requests public access.

4. The Court of Appeal does not say that you cannot make a request under R. 262.2 RoP alongside a request under R. 262A RoP, but of course it cannot replace such a request! The only advantage I can see to asking for both is that, if a member of the public later asks for access, it is immediately clear what is confidential (which of course can be disputed by that member of the public). However, if this leads to accidents like the one in this case, then perhaps it is better to keep the requests strictly separate, as in fact advocated by the Court of Appeal!

    

26 January 2026

Central Division Paris, Nanoval v ALD

UPC_CFI_999/2025

Same revocation proceedings

Facts

1. The claimant, ALD, started revocation proceedings in the Central Division Paris against Nanoval.
2. Nanoval filed a Preliminary objection requesting
   1. to declare that the case is not admissible;
   2. alternatively, to suspend the case until the Local Division Munich has ruled on the Counterclaim for revocation lodged by a subsidiary of ALD in infringement proceedings pending there.
3. The JR dismissed the Preliminary objection.
4. Nanoval asked for review.

The Court (full panel)

1. The argument that ALD and its subsidiary in the German proceedings are in fact the same party is rejected. These companies are not the same companies and have each a different interests with respect to the revocation (citing UPC_CoA_464/2024).
2. You also cannot call ALD a straw man, as it has its own activities and employees.
3. The decisions by the Court of Justice of the European Union that were relied on with respect to different companies belonging to the same group are decisions in competition cases. This is a patent case.
4. The Court also refused to stay the proceedings. The only basis for this would be R. 295(m) RoP, where the proper administration of justice so requires. This is not the case here.
5. Leave for appeal was refused.

Comment

1. An SME wants to enforce its patent in the UPC. The defendant files a Counterclaim for revocation. So far, so good. However, the parent company of the defendant then starts a revocation procedure in the Central Division.
2. The SME complains that these tactics will make enforcing its patent far more expensive, and that there is no good reason for it.
3. The Court decides that the companies are different and that the parent company, which initiated the revocation proceedings, cannot be considered a straw man. This is all absolutely correct.
4. However, if it indeed transpires that the action is intended to cause financial hardship and the claimant cannot provide convincing reasons why it has a clear interest in bringing an identical revocation action to the action pending in Munich, I disagree with the decision not to stay.
5. What constitutes proper administration of justice? In my opinion, it certainly does not involve inflicting financial hardship on an SME that uses the UPC to enforce its rights. Allowing such tactics would create an even higher barrier for SMEs to enforce their patents. This has nothing to do with “proper administration of justice”.
6. I cannot see any disadvantage in staying the proceedings, especially as the proceedings in Munich are already at an advanced stage, with the Counterclaim for revocation already filed.
7. Is it efficient for two Divisions to spend their time and efforts on essentially the same case?
8. While it is always possible that you may have different views on whether or not to stay, I think it goes (too) far to not even allow an appeal. On the contrary it would be beneficial if the Court of Appeal could provide some guidance on how to deal with this type of strategy.

26 January 2026

Court of Appeal, Sun v Vivo / Apple

UPC_CoA_755/2025; UPC_CoA_757/2025; UPC_CoA_791/2025; UPC_CoA_793/2025

Confidentiality regimes

Facts

1. Sun initiated SEP proceedings against Vivo.
2. Sun wanted to produce license agreements in the proceedings, which they claim are highly confidential, and in fact wanted an external eyes only (EEO) confidentiality regime.
3. This was not granted in first instance.
4. Sun appealed, and Apple was allowed to join the proceedings with regard to the requests for confidentiality of their agreements.

The Court of Appeal

1. Regarding Apple’s application, the Court stated that Apple can only support a party (in this case Sun) but cannot claim more than Sun.
2. A court may grant “confidentiality” if the grounds relied upon by the applicant significantly outweigh the interests of the other party in having full access to the information.
3. At least one natural person from a party should be granted access, and this person may be an employee.
4. If the confidential information concerns license agreements with third parties, the potential harm to such third party may be mitigated by requiring said employee, who will be granted access, to refrain from involvement in license negotiations for a certain period.
5. If the confidentiality provisions are violated, the Court may impose penalties on the party whose representatives or employees have violated the confidentiality provision. With respect to representatives, the Court can take disciplinary measures based on a violation of the Code of Conduct for Representatives pursuant to R. 290.2 RoP.
6. The Court rectified in part the order of the Court of First Instance.

Comment

1. The UPC does not accept the EEO regime.
2. Parties or employees who get access can be scrutinized in the sense that they have to be trustworthy, and should be able to assist their party’s interest, while ensuring that their possession of the information does not harm the other party or third parties. Therefore, such employees are not permitted to participate in license negotiations if they have obtained confidential knowledge of already existing license agreements.
3. Overall, this seems to be a rather balanced system, in which slightly more emphasis is put on the interest for a defendant to have full knowledge of what the claimant is alleging – in other words in order to ensure a fair trial – without, however, losing sight of the interests of the claimant and third parties.  
4. Representatives or other individuals who violate confidentiality obligations cannot be fined by the Court. However, the party for which they act can be fined, and the representatives can be disciplined. I would add to that that this does not exclude their civil law liability for any damage caused by themselves (or, for representatives, by team members who work for them). 

26 January 2026

Court of Appeal, Ericsson v Asustek

UPC_CoA_632/2025

Confidentiality regimes

Comment

The same confidentiality issues arose in this case as in the case Sun v Vivo/Apple case reported above (UPC_CoA_755/2025, UPC_CoA_757/2025, UPC_CoA_791/2025 and UPC_CoA_793/2025), with the same decision!

28 January 2026

Local Division Düsseldorf, Labrador v bioMérieux

UPC_CFI_315/2024

Bifurcation

Facts

1. This concerns an infringement case in which the case was bifurcated. The Counterclaim for revocation was transferred to the Central Division Milan, where a revocation action was already pending.
2. EPO proceedings are also pending.

The Court

1. The Court is bound by the new wording of the claim, as established by the Central Division Milan (as a result of which the “sample unit” is now a constructive element of the patented device).
2. The Court adopted Central Division Milan’s claim interpretation and found no direct infringement.
3. The Court also did not find equivalent infringement, as the equivalent does not perform essentially the same function.
4. In a bifurcation case where the Court does not find infringement, the question of validity is no longer relevant to the decision.

Comment

1. The Court stated that it agrees with the Central Division with respect to the claim interpretation of the Central Division. I would go one step further. I think that, in a bifurcated case, the infringement court should adopt the decision of the Central Division. When a patent is maintained in its original or amended form on the basis of a certain limited interpretation of the claim, it would not be right to find infringement based on a broader interpretation of the claim.
2. Of course, I realize that this may be not so easy in practice, because first instance decisions may be appealed, etc. This shows that bifurcation can easily lead to complications.
3. In this case, the Court in Düsseldorf referred the Counterclaim for revocation to Milan as there a revocation action was already pending there. This makes sense for efficiency reasons. However, it would have been better if it would also have been possible to refer such a case from the Central Division to the infringement court which is dealing with the infringement, so that infringement and validity would be decided by the same panel. This would be even more efficient and prevent different views about the scope of the claims. However, under the current UPCA, this is not possible!
4. No infringement under the doctrine of equivalence, because the equivalent does not perform essentially the same function. It looks like the Court applies the “function-way-result” test, i.e. “does the equivalent with essentially the same means in essentially the same way perform essentially the same function with essentially the same result?” This test – mitigated by “Gilette” and “prosecution history estoppel” –seems more internationally accepted than local tests such as the Dutch test or the (at least for me) very complicated German test for equivalence.