UPC-Update Archive - BOEHMERT & BOEHMERT

UPC Court of Appeal on security for costs: Litigation insurance recognised in principle, subject to scrutiny

1. April 2026/in UPC-Update Patent Litigation, Patents and Utility Models

The Court of Appeal recognises litigation insurance as a potentially relevant element in the assessment of security for costs under the UPC.

In its decision of 21 February 2026 in Astellas Institute for Regenerative Medicine v Healios K.K. (UPC_CoA_489/2025), the Unified Patent Court Court of Appeal addressed the role of litigation insurance in the context of security for costs and confirmed that such arrangements may in principle be taken into account.

The decision provides important guidance for UPC litigation. While litigation insurance is not treated as automatically equivalent to traditional forms of security, it is recognised as a potentially relevant means of addressing cost risk.

Background

The case arose from an application for security for costs. The applicant argued that there was a risk that a potential adverse costs award could not be enforced and requested that security be ordered.

The opposing party relied, inter alia, on a litigation insurance arrangement covering adverse costs. The central question was therefore whether such an arrangement could be considered sufficient to mitigate or exclude the need for security.

Recognition of litigation insurance

The Court of Appeal made clear that litigation insurance can, in principle, be relevant when assessing whether a party is able to meet a potential costs order.

This constitutes a notable development. Rather than excluding such arrangements from consideration, the Court acknowledged that modern litigation structures may involve insurance-based coverage of cost risks and that these arrangements can be taken into account.

At the same time, the Court did not establish a general equivalence between litigation insurance and traditional forms of security.

No automatic equivalence to bank guarantees

The Court emphasised that the decisive question remains whether the risk of non-recovery is sufficiently addressed in practice.

In this context, litigation insurance is not automatically equivalent to a bank guarantee or similar forms of direct security. Its adequacy depends on the specific terms and reliability of the insurance.

The Court therefore rejected a formal approach and confirmed that different types of financial backing must be assessed on their individual merits.

Criteria for assessment

The decision indicates that litigation insurance will be subject to a detailed and case-specific assessment.

Relevant considerations include whether the insurance provides:

a direct and enforceable claim covering adverse costs,
sufficient coverage in scope and amount,
and a reliable payment mechanism without material uncertainty.

Arrangements that are subject to conditions, exclusions or discretionary elements may not be sufficient to eliminate the risk of non-recovery.

Practical implications

The decision has immediate implications for UPC litigation.

First, it opens the door for litigation insurance to be used as part of a strategy to address security for costs. Parties may rely on such arrangements, provided they can demonstrate their reliability.

Second, the decision also makes clear that such reliance will be scrutinised closely. The burden remains on the party invoking the insurance to show that it provides effective protection.

Third, applicants for security for costs retain the possibility to challenge the adequacy of such arrangements and to argue that additional security is required.

Conclusion

The Court of Appeal recognises litigation insurance as a potentially relevant element in the assessment of security for costs under the UPC. At the same time, the decision confirms that its acceptance is not unconditional. The decisive factor remains whether the arrangement provides a reliable and enforceable safeguard against the risk of non-recovery.

Initial market reactions indicate that insurers have already begun to structure and offer corresponding products tailored to UPC litigation.

Dr. Michael Rüberg, Attorney at Law at BOEHMERT & BOEHMERT

BSH before the UPC and the German courts – first applications, an emerging tendency and open guiding questions [Update on BSH case law]

6. February 2026/in IP-Update, UPC-Update Patent Litigation

Update on the article “BSH as a Gateway to Cross-Border Patent Enforcement: The Regeneron/Bayer vs Formycon and Onesta vs BMW Cases” from December 1, 2025

The CJEU’s decision in BSH v Electrolux (C-339/22) has by now been expressly taken up in several decisions of the UPC, in particular with regard to the question whether, where jurisdiction is based on the defendant’s domicile, the UPC may also rule on alleged infringements relating to non-UPCA validations of a European patent, for example in Spain, the United Kingdom or Switzerland.

An early and frequently cited reference can be found in the order of the Milan Local Division of 8 April 2025 in Alpinestars v Dainese, in which the court adopted the CJEU’s reasoning and considered the UPC’s jurisdiction as a court of a Member State within the meaning of the Brussels Ia framework also with respect to non-UPCA validations. In a comparable manner, the Paris Local Division in IMC Créations v Mul-T-Lock examined and affirmed jurisdiction also with regard to the Spanish, UK and Swiss parts of the bundle patent, based on EU jurisdictional principles.
The practical reach of the BSH approach became particularly visible in interim relief proceedings in Dyson v Dreame (Hamburg Local Division, 14 August 2025), where the injunction order also covered Spain. At the same time, these decisions show that the UPC does not apply an automatic or schematic extension of jurisdiction, but regularly requires a concrete and at least plausible factual submission concerning the alleged infringing acts in the respective third state.
The treatment of validity challenges outside the UPC territory is, so far, handled differently and on a case-by-case basis. Academic commentary discusses in this context whether, and to what extent, such challenges should be addressed at the jurisdictional stage or only at the level of the merits.

In Onesta v BMW before the Munich Regional Court I, infringement of, inter alia, US patents is asserted. The jurisdictional argumentation draws on considerations that have gained prominence in the European context through BSH, but transfers them to a setting involving third-state patents outside Europe.

On the US side, Judge Alan Albright (W.D. Texas) issued an ex parte Temporary Restraining Order (TRO) on 16 December 2025, which was subsequently extended and, on 13 January 2026, converted into an Anti-Suit Injunction (ASI) in favour of BMW. The purpose of these measures was to prevent the continuation of the German proceedings insofar as they concern the US patents. Appeals were lodged against the ASI, and the Federal Circuit granted interim relief, leaving the procedural situation open for the time being.

Conclusion

UPC case law now shows an identifiable tendency to rely on BSH as a viable basis for extended international jurisdiction, including with respect to non-UPCA validations of European patents. However, the contours of this approach will continue to be shaped, in particular by the treatment of validity challenges and by constellations involving third-state patents. Onesta v BMW further illustrates that extending such jurisdictional reasoning to third-state patents entails significant conflict potential with foreign procedural instruments and brings issues of international procedural coordination increasingly to the fore.

CoA clarifies damages in Bhagat/Oerlikon

29. January 2026/in UPC-Update Patent Litigation

In Bhagat/Oerlikon (UPC_CoA_8/2025, decision of December 9, 2025), the CoA clarifies various aspects of the legal principles guiding damages under the UPC framework.

The status quo

In comparison to the US, damages have led a niche existence in European patent litigation. It has been speculated in the legal literature (Veron, GRUR 2021, 392) that this is not due to differences in legal principles, as the feared treble damages had not been applied in the most spectacular awards in the US. Rather, the differences seem to primarily stem from the fragmented enforcement of patent rights pre-UPC, and thus also the limited coverage of damages claims.

For this reason, there is an expectation among UPC practitioners that with the UPC’s coverage of 18 EU-member states (and more EPC countries via the BSH judgement of the ECJ), damages might leave their niche existence in Europe behind. Decisions on damages therefore catch the eye.

Bhagat/Oerlikon and the fundamentals of damages calculation at the UPC

In Bhagat/Oerlikon (UPC_CoA_8/2025, decision of 9 December 2025), the CoA clarifies various aspects of the legal principles guiding damages under the UPC framework.

On the outset, the decision makes us recall that Art. 68 UPCA is a verbatim implementation of Art. 13 of the Enforcement directive, and thus already, in its wording, diverges from the German national approach on damages, which stipulates that the patent proprietor can claim damages based on one of the three calculation methods (license analogy, infringer’s profits, lost profits), which are mutually exclusive.

Art. 68 UPCA instead proposes two methods of calculation, whereby the first one merges infringer’s profits and lost profits into a composite method, and adds “moral prejudice caused to the injured party by the infringement”. The CoA has held that moral prejudice requires reputational harm, and it appears likely that standard infringement actions will not suffice to fulfill this requirement (cf. recitals 26 to 30). “Moral prejudice” will therefore likely only play a minor role in future damages calculations. Furthermore, the decision holds that offerings alone will in most scenarios not constitute grounds for damages, and that actual sales will be required (cf. recitals 18 to 22).

Principles of liability

A declaration that an infringer is liable for damages requires knowledge of an infringement or reasonable grounds to know (Art. 68 para 1 UPCA). The CoA aligns with most of the national courts and holds that if the infringer is a direct competitor of the patent proprietor, it has a de facto obligation to monitor its competitors patent rights (recitals 23 to 25). This will have the likely result that competitors will be liable for damages in case of an infringement, regardless of whether they were aware of the respective patent or not, and that only downstream businesses like distributors might be able to argue that they had no reason to know of the respective patent (and are therefore not liable for damages).

For patent proprietors it is now important to recognize that under the UPC framework, infringers will in most scenarios be held liable for damages, and that the calculation of these damages is more flexible than under national frameworks. The UPC is therefore shaping up to be an ideal place for not only pursuing injunctions, but also damages.

Serving Court Documents in China: Lessons from a UPC Case in Milan

21. January 2026/in UPC-Update Patent Litigation, Patents and Utility Models

Serving court documents on Chinese defendants remains a challenge in UPC litigation. A recent decision by the Milan Local Division of the EPO points to possible solutions.

Background: A Cross-Border Service Challenge

In December 2025, the Milan Local Division of the Unified Patent Court (UPC) issued a notable decision (Case UPC_CFI_766/2024) addressing the difficulties of serving court documents on companies based in China. The case involved a patent infringement claim by Cardo Systems against two defendants, one in Hong Kong and one in mainland China. While the Hong Kong-based defendant was ultimately served on a second attempt, service on the Shenzhen (PR China)-based company failed twice due to objections raised by Chinese authorities. This situation highlighted the procedural hurdles and international complexities when delivering UPC legal documents abroad under the Hague Service Convention.

The Hague Service Convention and UPC Rules of Procedure

When serving defendants outside the EU (and outside the UPC’s member states), the UPC relies on the Hague Service Convention as the primary mechanism for cross-border notification. The UPC’s Rules of Procedure explicitly integrate the Hague Convention’s framework, ensuring a uniform approach to service across all participating states. In fact, the Milan court emphasized that Article 15(2) of the Hague Service Convention applies fully in the UPC system, regardless of any additional national requirements, because the UPC has a uniform service regime and all member states have effectively adopted the Convention’s rules by agreeing to the UPC Rules. In practice, this means that if a document needs to be served in a non-UPC country like China, the serving party must follow Hague Convention procedures (e.g. through the designated Central Authority) before resorting to any alternative methods.

Political and Formalistic Obstacles: The China Dilemma

In the Milan case, the Chinese Central Authority twice refused to execute service on the Shenzhen defendant for an unusual reason: the court papers referred to the first defendant’s address as “Hong Kong” instead of “Hong Kong, China”. This demand – essentially a political/semantic issue – created a serious obstacle to serving the lawsuit. The UPC court noted that such a refusal was based on a purely formalistic ground, since the first defendant in Hong Kong had already been successfully served (making the address wording issue moot). More importantly, the court held that foreign authorities have no right to demand changes to the content of judicial documents. Quoting a prior UPC decision, the Milan judge stressed that “censorship of content based on political expediency has no place in the Hague Service Convention”, and it is not the role of a receiving state’s agency to “censor or edit the content of the document to be served”. How a claimant describes a defendant’s address is up to the claimant; a Central Authority cannot block service over terminology or political nuances. The Chinese authority’s insistence on the phrase “Hong Kong, China” was therefore deemed an improper basis to refuse service.

The Milan Court’s Solution: Valid Service Despite Refusal

Facing a “serious and final” refusal by China’s authorities to effect service, the Milan Local Division took a pragmatic approach. The court declared that the steps already undertaken by the claimant to serve the Chinese defendant – transmitting the documents via the Hague Convention process – were sufficient to constitute legally valid service, even though the defendant had not physically received the papers. Under the Hague Convention (Article 15) and UPC rules, once all reasonable formal attempts have been made and a foreign authority definitively rejects or fails to complete service, the court may proceed without further delay. The Milan decision confirmed that no additional attempts were necessary in this case, as requiring more tries or waiting longer would be futile.

Crucially, the court refused to alter or “water down” the content of the documents to satisfy the foreign authority, citing the independence and impartiality of the judiciary. Instead, the judge treated the Chinese authority’s non-cooperation as a breach of the Hague Convention obligations and moved forward by issuing an order to validate service. In the court’s words, “the steps already taken…constitute legally valid service. Otherwise, service would be impossible.”

Alternative Means: Notice by Publication on the UPC Website

To further safeguard the defendant’s due process rights despite the lack of formal service, the Milan Local Division employed an unconventional backup method: publication of a notice on the UPC’s website. The court ordered that a reference to its decision (including the party names and case number) be posted on the publicly accessible UPC website, effectively as a form of public notice. This way, even though official service through Chinese channels failed, the defendant could still become aware of the ongoing proceedings by seeing the announcement online. The court explicitly stated that formal service of the decision itself was unnecessary (and would have been doomed to fail for the same reasons) once this online publication was made. This approach — essentially service by public notification — is provided for in the UPC framework as a last resort when all formal avenues are blocked.

Practical Takeaways for UPC Litigation

Plan for Delays and Obstacles: Serving defendants in non-EU countries like China can be fraught with unexpected hurdles. Be prepared for potential delays and formal objections (in this case, it took nearly a year of efforts and a court order to resolve service).
Adhere to Hague Convention Formalities: Ensure full compliance with Hague Service Convention requirements (proper translations, forms, addresses, etc.) when serving abroad. Minor errors or deviations can prompt refusals, as seen with the “Hong Kong” nomenclature issue. While the UPC won’t require altering your documents to appease foreign authorities, anticipating local sensitivities (e.g. naming conventions) might save time.
UPC Rules Require Exhaustion of Official Channels: The UPC will generally insist that you exhaust formal service methods under Hague (or applicable international channels) before seeking alternative means. Attempts to bypass official procedures (like direct email or local publication at the court) will not be approved “at this stage” unless convention routes truly fail.
Courts Won’t Tolerate Unreasonable Refusal: If a foreign state’s authorities refuse service for improper reasons, the UPC is prepared to declare service effected regardless. In Milan, the judge treated the Chinese authority’s stance as contrary to the Convention and moved on. Practitioners can take comfort that good-faith attempts to serve won’t be in vain due to politics or formalism.
Alternative Service by Court Order: The Milan case demonstrates that the UPC can resort to alternative measures like publicizing the case on the court’s website when standard service is impossible. Lawyers should be aware that a defendant who evades service (or whose country obstructs it) may still be bound by proceedings that continue in their absence. For defendants outside Europe, it’s wise to monitor UPC publications and not rely on local authorities to forward documents.
Looking Ahead: This decision fits neatly with the principles already developed by the Court of Appeal in CoA_69/2024, order of 9 July 2024. It signals that the UPC will strike a balance between respecting international service treaties and ensuring that litigation isn’t derailed by external roadblocks. In future cases involving non-EU parties, we can expect the UPC to take a similar pragmatic approach, upholding the integrity of its process while using creative solutions (like website notices) to give defendants a fair chance to respond.

BSH as a Gateway to Cross-Border Patent Enforcement: The Regeneron/Bayer vs Formycon and Onesta vs BMW Cases

1. December 2025/in IP-Update, UPC-Update Patent Litigation, Patents and Utility Models

The CJEU ruling in BSH v. Electrolux (C-339/22) changes the rules of the game. National courts emerge as pivotal nodes in transnational disputes and can rule on patent infringements even if the patent is valid in several countries. Initial practical cases demonstrate the scope of this ruling.

With its judgment in BSH Hausgeräte v Electrolux (CJEU, C-339/22), the Court of Justice of the European Union reshaped the framework for international jurisdiction in patent matters. The CJEU held that a national court in the defendant’s domicile may adjudicate infringement of a patent even when that patent is protected in other countries, and even if validity proceedings are pending elsewhere. What matters is solely that the seized court does not rule on validity with erga omnes effect, which remains reserved under Article 24(4) Brussels I Recast to the courts of the state of registration; an inter partes assessment of validity for infringement purposes remains permissible. For additional background, see our earlier article “Landmark ruling of CJEU with significant impact on european patent litigation strategies”, dated February 28, 2025.

Importantly, the reasoning in BSH is not limited to European patents. It applies to any patent—including US or other non-European rights—where the court is asked to decide solely on infringement. Unsurprisingly, patentees have already begun to explore these new possibilities. This is particularly visible in two current cases pending before the Munich I Regional Court: the life-sciences matter Regeneron/Bayer vs Formycon, the first known instance of a Europe-wide injunction under the BSH framework on the basis of an EP patent, and the technology-focused Onesta vs BMW dispute, where the application of BSH to US patents is now squarely at issue.

Regeneron/Bayer vs Formycon: The First Extensive Application of BSH in the EP-Patent Context

The Regeneron/Bayer case concerns the alleged infringement of a European patent, whose German part had previously been upheld in amended form. The Munich I Regional Court granted first a preliminary cross-border injunction and later a permanent injunction, both extending to more than twenty European states. The court explicitly relied on the BSHreasoning, grounding its international jurisdiction in Formycon’s domicile in Germany.

The validity of the German part of the EP patent did not require renewed assessment; the focus lay instead on whether Formycon’s planned biosimilar product implemented the patented technical teaching—at least by way of equivalence. Notably, the court required neither separate technical assessments for individual EU Member States nor expert opinions on the application of foreign law. The court emphasised that it was for the defendant to substantiate that product variants intended for other jurisdictions differed technically, or that foreign legal regimes imposed materially different requirements for the infringement assessment. As Formycon made no such submissions, the court proceeded on the basis of a technically uniform product and an absence of demonstrated foreign-law divergences.

Against this backdrop, the court extended its infringement analysis—including its finding of equivalence—to all affected European markets. This decision represents the first publicly known example in which a German court has applied the BSH principles to an EP patent and issued a wide-ranging, Europe-wide injunction on that basis.

Onesta vs BMW: Testing the Extra-European Reach of BSH

Whereas Regeneron/Bayer employs the BSH framework within the European patent system, Onesta IP takes a further step. The company has filed three infringement actions before the Munich I Regional Court against BMW AG. In addition to a European patent, Onesta asserts two US patents, alleging infringement by head-unit modules manufactured in Germany.

This makes the case particularly significant: for the first time, a court may be asked to determine the infringement of US patents under the jurisdictional mechanism confirmed in BSH. Based on the defendant’s domicile and the strict separation between infringement and validity proceedings, a German court could—at least in principle—have jurisdiction to determine whether conduct in Germany infringes US patents, without trespassing on the exclusive US competence for validity questions.

It remains to be seen how the Munich I Regional Court will approach the US-law questions, which will almost certainly require expert evidence on foreign law. Should the court ultimately confirm jurisdiction and find infringement, it would be remarkable: for the first time after BSH, a US patent could be enforced through German civil-procedure mechanisms—without US-style discovery, without a jury, and with entirely different standards for injunctive relief (e.g. how eBay factors might be addressed in a German context). Depending on the outcome and on how questions of cross-border recognition (including potential US countermeasures such as anti-suit injunctions) are resolved, the case could open new avenues for global patent-enforcement strategies.

Conclusion: BSH Has Immediate Practical Impact—Within Europe and Beyond

The Regeneron/Bayer and Onesta/BMW cases illustrate that BSH is not a technical footnote but a practically influential development that is already reshaping patent enforcement in Europe. Regeneron demonstrates how cross-border injunctive relief based on a European patent can be obtained in a single German proceeding, while Onesta shows that patentees are prepared to push the BSH logic further and test European courts as potential venues for adjudicating infringement of foreign patents.

Both developments signal an important moment in the evolution of European patent litigation: jurisdiction increasingly centres on the defendant’s domicile; national courts emerge as pivotal nodes in transnational disputes; and the strategic potential of the European judiciary—as shaped by BSH—is being used visibly and decisively for the first time.

Effective preservation of evidence at the UPC: Guidelines from Brussels, Mannheim, and Düsseldorf

27. November 2025/in UPC-Update Patents and Utility Models

With its latest decisions, the Unified Patent Court has clarified the instruments of evidence preservation and inspection orders under Article 60 UPCA and Rules 192 et seq. RoP. It is becoming apparent that evidence preservation measures before the UPC are a strategically effective tool.

In recent months, the Unified Patent Court (UPC) has issued a series of decisions that have clarified the instruments of evidence preservation and inspection orders under Article 60 UPCA and Rules 192 et seq. RoP. The decisions from Brussels, Mannheim, and Düsseldorf show that the court grants patent holders low-threshold access to rapid and effective investigative measures, while at the same time subjecting these measures to judicial review of proportionality and confidentiality. Overall, it is becoming apparent that evidence preservation proceedings at the UPC are not just a theoretical tool but can prove to be strategically valuable in practice.

1. The legal framework – flexible powers of intervention, accompanied by control

Under Article 60 of the UPCA and Rules 196 et seq. RoP, the UPC may order comprehensive measures to preserve evidence, including inspection, documentation, opening of devices, or even seizure. Rule 197 RoP expressly allows ex parte orders if delays would jeopardize the purpose – for example, due to the threat of removal or alteration of evidence-relevant products.

The recent decision of the Brussels Local Division (Organon v. Genentech, UPC_CFI_407/2025) has specified the requirements for issuing a measure to preserve evidence under Rules 196 et seq. RoP. The Division clarified that the issuance of inspection orders without a prior hearing is subject to a two-stage review program:

First, an ex ante review is conducted to determine whether the order was justified on the basis of the facts known and reasonably recognizable to the court at the time of issuance.

In a second step, an ex-post assessment is carried out to examine whether the measure needs to be confirmed, adjusted, or revoked in light of all the information now available. In doing so, the court refers this review back to the time of the issuance of the order, which is why the results of the inspection may not be used for subsequent justification.

With regard to the requirement of “imminent infringement” as a separate threshold, the decision emphasizes that a plausible and concrete probability of infringement is sufficient.

2. The geographical and material scope of the orders

The decision of the Mannheim Local Division (Centripetal v. Palo Alto, UPC_CFI_636/2025) shows how important it is to precisely formulate the geographical scope. In the facts underlying this decision, it turned out that the premises named did not contain the relevant systems or data. The patent owner then demanded sanctions for lack of cooperation.

However, the Court of Appeal clarified that an inspection order does not oblige the respondent to first bring missing items—such as machines or servers—to the premises being searched or to provide data separately. The respondent is therefore only required to actively cooperate if their actions are necessary to enable the applicant to inspect the premises and the items located there in accordance with the order; there is no further obligation on the part of the respondent to actively cooperate.

The premises to be inspected must therefore be described as precisely as possible. Only then can both the effectiveness of the measure (Art. 7 Enforcement Directive) and the fundamental rights of the respondent (Art. 7 CFREU, Art. 8 ECHR) be guaranteed. The inspection may not be extended to other locations that are not explicitly named, unless these are immediately adjacent areas that are clearly functionally related. The local limitation also defines the content and scope of the inspection: only objects, data, and systems that are actually located in the designated premises may be examined.

The decision thus emphasizes that careful application is crucial.

3. Generous granting of inspections in Düsseldorf based on the Düsseldorf procedure

In the Van Loon v. Inverquark decision (UPC_CFI_1325/2025), the court granted ex parte permission for comprehensive preservation of evidence relating to a product (“InverJet”) exhibited at a trade fair. The technical features disclosed were not sufficiently recognizable from the outside; only an inspection could provide clarity. The court saw an imminent loss of evidence due to the temporary availability at the trade fair and ordered far-reaching measures—including opening the device, taking measurements, and documenting it with images.

According to the decision, neither the mere denial of patent infringement nor general references to a doubtful validity in a protective letter previously submitted by the respondent preclude the issuance of an order to preserve evidence; rather, the decisive factor is whether there are concrete indications of a lack of validity. The court affirmed the urgency in view of the short-term availability of the product at the trade fair and the market conditions, which effectively ruled out a test purchase or a thorough investigation by the patent holder. Similarly, the risk of the exhibit being removed justified the ex parte decision, with the court clarifying that even a protective letter submitted by the respondents was not specifically directed against an inspection order and that a hearing was therefore not necessary.

In the OTEC v. Steros decision (UPC_CFI_885/2025), the court also followed the line of allowing inspections to be carried out over a wide area. The order included, among other things, the technical commissioning of a machine at an exhibition stand, measurements and, if necessary, seizure. At the same time, strict confidentiality requirements were imposed in favor of the respondent, including a staged release of the detailed description to be prepared by the expert.

The subsequent decision of November 17, 2025 (also UPC_CFI_885/2025) deals with the requirements for disclosure of the expert’s detailed description of the inspection and the handling of the respondent’s confidentiality interests. The decision confirms the two-stage examination mechanism that has now also been established at the UPC: First, extensive inspection and documentation powers are granted in the interest of effective preservation of evidence; then, a court-controlled confidentiality assessment is carried out before the findings obtained may be made available to a party.

4. Conclusion: The evidence preservation procedure before the UPC – a worthwhile instrument

The decisions presented here show that, based on its case law to date, the UPC readily grants orders for the preservation of evidence if the requirements are plausibly demonstrated. Particularly in the case of trade fair products, built-in systems, or technically complex devices, the evidence preservation procedure is often the only realistic way to prove patent infringement. At the same time, judicial review ensures the rule of law and proportionality without compromising effectiveness.

Overall, evidence preservation measures before the UPC are a strategically effective tool.

Changes to the infringing product in ongoing UPC-proceedings

11. November 2025/in UPC-Update

How to get a statement from the UPC that my once infringing product is no longer infringing

Last week we looked at the decision in the case UPC_CFI_386/2024 between HL Display AB and Black Sheep Retail Products B.V. of 10 October 2025 by the Local Division (LD) of The Hague with regards to its implications for the long arm jurisdiction of the UPC.

This week, we are looking at an additional material aspect of this decision.

Not seldomly, during patent infringement proceedings, the accused infringer makes changes to the attacked product which are intended to lead it out of the scope of protection of the asserted patent. The question is then: were the changes enough?

What would be more obvious for the defendant to extend the lawsuit also to this question? Alas, extensions of an infringement action to additional products are subject to an application by the claimant and cannot be applied for by the defendant.

Thus, the defendant could think about lodging a counterclaim for declaration of non-infringement. However, such a claim must meet the requirements of Rule 61 of the Rules of Procedure, which stipulates that the patent proprietor must have asserted that the product-in-question (also) infringes, or that the (potential) infringer requested from the proprietor in detail and in writing that it acknowledges that no infringement is given, and it either refused to do so or did not reply within one month.

The court held that since the claimant did not imply that the changed product could be covered by its claim, the defendant would have been obliged to seek an out-of-court declaration under Rule 61 RoP, whereby the counterclaim for a declaration of non-infringement cannot be seen as a valid replacement of this out-of-court application, and therefore found the counterclaim inadmissible. It could thus leave open, whether the RoP allows for such a counterclaim in the first place, since it is not provided for expressis verbis, or whether a separate claim would have had to be filed.

However, the court explicitly stated in its decision that the changed product was – for a lack of assertion thereof – not covered by the injunction, therefore providing legal certainty for the defendant at least to this extent.

The lessons for defendants from this are threefold:

• Firstly, just making changes to a product but not informing the court thereof might risk that an injunction covers also the changed product (and might preclude arguments regarding the changes in enforcement proceedings, i.e. when the patent proprietor seeks enforcement also with regards to the changed product).
• Secondly, if there is uncertainty whether the changes made to the product are enough for it to be non-infringing, just providing information on the general nature of the changes in the submissions to the court might be preferable to a declaration of non-infringement, as it would place the ball back in the court of the claimant, who must make the same risk assessment, but is then obliged to act on it: either extend the statement of claims to the changed product, and risk a corresponding rejection of the claim, or not extend the statement of claim, which then means that a decision would definitely not cover the changed product.
• Thirdly, if there is a strong case for non-infringement by the changed product, seeking a corresponding declaration from the claimant and then potentially filing a claim for a declaration of non-infringement (as a corresponding counterclaim might not be admissible because of the stated regulatory gap) might be the best way to move forward.

The Unified Patent Court’s “Black Sheep”: Long-Arm Jurisdiction

3. November 2025/in UPC-Update Patent Litigation

Far-reaching jurisdiction of the UPC: balancing efficiency and respect for national courts

On 10 October 2025, the Local Division (LD) of The Hague of the Unified Patent Court (UPC) delivered a decision in the case UPC_CFI_386/2024 between HL Display AB and Black Sheep Retail Products B.V. The ruling, while concerning a rather technical patent dispute over a shelf divider system, has drawn significant attention for what it says about the UPC’s interpretation of its own reach — in particular, the exercise of long-arm jurisdiction over countries outside the UPC’s Contracting Member States (CMS).

Background of the case

The dispute centred on European Patent EP 2 432 351, owned by HL Display AB, covering a system for securing shelf accessories to retail shelving. The Swedish claimant HL Display alleged that Black Sheep Retail Products (BSRP), a Dutch company, had infringed the patent by manufacturing and supplying shelf divider systems. BSRP counterclaimed for revocation and also sought a declaration of non-infringement regarding a revised version of its product. The Court ultimately found the patent valid and infringed, while declaring BSRP’s counterclaim for non-infringement inadmissible.

The court’s approach to competence and long-arm jurisdiction

One of the most significant parts of the judgment lies in the Court’s reasoning, regarding the LD’s own competence — particularly the issue of long-arm jurisdiction. The defendant did not dispute the international and relative competence of the Local Division, and importantly, did not challenge the Court’s long-arm jurisdiction for countries where the patent was in force, but which are not Contracting Member States of the UPC Agreement. These include Liechtenstein, Ireland, Norway, Poland, Switzerland, and the United Kingdom.

The court raised the issue of the invalidity defence in view of the ECJ’s decision in BSH v. Electrolux. At the hearing the defendant clarified that its counterclaim for revocation only pertained to the CMS, while for the non-CMS it was to be considered an invalidity defence. The defendant also clarified that no revocation claims had been instituted in any of the non-CMS countries.

On that basis, the Local Division of The Hague confirmed that it assumes competence to hear infringement claims for all states designated under the European Patent, even when those states are not Contracting Member States. This interpretation effectively allows the UPC to extend its jurisdiction to non-UPC territories within the limits of the European Patent’s designation, provided that the patent remains in force there.

However, the Court drew important distinctions depending on the category of non-UPC states. For non-CMS European Union or Lugano Convention member states, like Norway and Switzerland, the Court stated that it will only proceed where there is no ‘serious, non-negligible chance’ that the competent national court would invalidate the patent. In contrast, for non-EU states such as the UK, the Court held that it may make an inter partes decision on validity. This cautious but assertive formulation balances judicial efficiency and relationship with other national courts.

Implications for cross-border enforcement

The LD’s reasoning signals an ambitious reading of the UPC’s powers, effectively enabling a pan-European, if not general, enforcement of European Patents under the UPC umbrella. By confirming its competence for infringement claims spanning both UPC and non-UPC territories, the decision provides patentees with a procedural pathway to pursue a single litigation covering multiple jurisdictions.

At the same time, the Court’s nuanced treatment of validity challenges outside the UPC territory shows a sensitivity to the limits of its authority and to the principle of mutual respect between jurisdictions. By recognising that non-CMS EU or Lugano states retain their own judicial authority to rule on patent validity, the Court avoids overreach while still asserting its jurisdiction to decide on infringement questions with cross-border effect.

This decision strengthens the UPC’s role as a central forum for European patent litigation, particularly for patentees seeking efficient remedies that encompass major markets such as the UK and Switzerland. At the same time, it raises questions about the enforceability of UPC orders beyond its formal territorial limits — a tension that may need to be resolved through future jurisprudence or political agreement.

Conclusion

The Local Division of The Hague’s October 2025 decision demonstrates the UPC’s willingness to interpret its jurisdiction broadly, particularly with respect to long-arm jurisdiction. While its approach reflects judicial pragmatism and an effort to deliver efficient, Europe-wide justice, it also underscores the delicate balance the Court must maintain when extending its reach into non-UPC territories. As this and similar cases progress, the contours of the UPC’s authority — and its interaction with national courts — will continue to define the future of European patent enforcement.

First Substantive Decisions of the UPC Court of Appeal: Seoul Viosys and Philips v. Belkin

20. October 2025/in UPC-Update

The decisions provide initial legal certainty on issues of disclosure, interpretation, infringement, and directors’ liability.

1. Context and Significance

In October 2025, the Court of Appeal of the Unified Patent Court (UPC) issued its long-awaited first substantive decisions: (i) the decision in Seoul Viosys (UPC_CoA_764/2024 & 774/2024) concerning added subject-matter, and (ii) the decision in Philips v. Belkin (UPC_CoA_534/2024, 19/2025, 683/2024) addressing infringement, claim interpretation, and directors’ liability.

These judgments – coming just over two years after the launch of the UPC system – mark the beginning of a true harmonisation of substantive patent law within the framework of the UPCA.

2. The Seoul Viosys Decision (CoA 764/2024 & 774/2024)

In its first substantive decision, the Court of Appeal dealt with the question of whether the granted claims extended beyond the content of the application as originally filed. The defendant in the infringement proceedings had filed a counterclaim for revocation based on added subject-matter. While the court of first instance had upheld the patent, the Court of Appeal reversed that decision and revoked the patent.

The Court confirmed that the relevant test for added subject-matter under Article 65(2) UPCA and Article 138(1)(c) EPC corresponds to the so-called “gold standard” of the EPO: the skilled person must be able to derive the claimed subject-matter directly and unambiguously from the original disclosure, taking into account their common general knowledge. An implicit disclosure is sufficient only if it is the inevitable consequence of what is expressly disclosed.

Particular importance was given to the issue of divisional applications. The Court held that the disclosure must be found not only in the divisional application itself, but also in any earlier application in the chain of filings – including parent and grandparent applications. The deletion of features or the combination of elements from different embodiments may amount to an impermissible intermediate generalisation unless the remaining combination is itself clearly and unambiguously disclosed as a general teaching. Applying this test, the Court found that the patent contained added subject-matter and therefore revoked it.

Commentators have noted that the reasoning closely follows EPO case law, while at the same time representing an autonomous application of these principles under the UPCA. The decision thus establishes a strict disclosure standard as the benchmark for assessing patent validity before the UPC.

3. The Philips v. Belkin Decision (CoA 534/2024, 19/2025 & 683/2024)

In its second substantive decision, the Court of Appeal dealt with several appeals arising from an infringement case before the Munich Local Division. Philips had asserted European Patent EP 2 867 997 against several Belkin entities and their managing directors. The first instance had found infringement and issued injunction, recall, and destruction orders. The Court of Appeal used the case to clarify key issues of infringement law – in particular, claim interpretation, the notion of “offering,” and personal liability of managing directors.

4. Claim Interpretation

The Court confirmed a functional, expert-oriented approach to claim interpretation. The key question was whether a transmitter that only sends a signal of “acceptance” fulfils a claim feature referring to “acceptance or rejection.” The Court of Appeal held that it does, as the technical purpose – the communication of the negotiation result – is achieved. The decisive point is the understanding of the skilled person in light of the description; statements made by the applicant during prosecution may serve as supporting evidence but cannot independently limit the scope of protection.

Accordingly, the Court clarified that the objective technical meaning derived from the description remains decisive, and that the prosecution history does not constitute a primary source of interpretation. This approach – largely in line with expectations – enhances legal certainty for future interpretation disputes before the UPC.

5. “Offering” as an Act of Infringement under Article 25(a) UPCA

The Court of Appeal interpreted the concept of “offering” in an economic and autonomous manner. A legally binding offer is not required; even a mere presentation or invitation to submit an offer can constitute an act of infringement if it enables potential customers to acquire the patented product. Consequently, online product listings, catalogues, or advertisements may amount to infringement, even where no sale has yet occurred.

This broad interpretation – largely consistent with German law – reflects the realities of modern marketing practices. Companies operating within the UPC territory must therefore continue to review their advertising and sales activities carefully to avoid infringement risks.

6. Liability of Managing Directors

A central aspect of the Belkin judgment was the personal liability of managing directors. The Court clarified that mere corporate office does not give rise to liability. Personal liability exists only where the director deliberately uses the company as an instrument of infringement or, being aware of the infringement and its unlawfulness, fails to take reasonable steps to prevent it. This is likely to result, overall, in a management liability regime that is somewhat less strict than under German law, yet still one to be taken seriously.

The Court further emphasised that obtaining well-founded legal advice – for example, a non-infringement or freedom-to-operate opinion – may shield against liability, at least until a first-instance court has confirmed the infringement. As Philips had failed to show intentional or knowing participation by the Belkin directors, the Court lifted the injunctions issued against them.

7. Relationship with National Decisions

Belkin relied on an earlier German decision in which a Philips infringement claim had been dismissed. The Court of Appeal, unsurprisingly, rejected this argument: the res judicata effect of national judgments extends only to their operative part within the respective national territory and between the same parties. The reasoning and interpretation of a national court are not binding on the UPC, which under Articles 34 and 65 UPCA exercises independent jurisdiction.

8. Conclusion

The first substantive decisions of the UPC Court of Appeal – Seoul Viosys and Philips v. Belkin – may hold few surprises in substance, but they nonetheless represent an important milestone in the development of European patent litigation. They provide initial legal certainty on issues of disclosure, interpretation, infringement, and directors’ liability. Further decisions of the Court of Appeal in the coming months are eagerly awaited and will continue to shape the UPC’s emerging jurisprudence.

The UPC and its hardline stance on late filing

13. October 2025/in UPC-Update

All reasonably available evidence and arguments should be submitted as early as possible. Submitting prior art and arguments based on it at a later stage risks their rejection. Early investment is essential; the respective initial pleadings in the proceedings should be as airtight as possible.

In a decision of 7 March 2025 (UPC_CFI_459/2023), the LD Duesseldorf held in its headnotes that

“Strategic maneuvering aimed at achieving surprise effects is foreign to the rules of procedure”

and thus rejected new invalidity attacks that had only been raised in the respective oral hearing.
While such maneuvering was not uncommon in, for example, national German patent litigation, the UPC has already gone beyond such tame limitations, and has shaped the RoP via interpretation in a way that can only be described as “front loaded” in litigation speak, a term that is also expressively used in the case law of the CoA itself, see e.g. headnotes of CoA, order of 18 September 2024, UPC_CoA_264/2024 et al.
Meaning, that parties should not only abstain from raising entirely new arguments in the oral hearing, but arguments should instead be raised as early as possible. Such an approach ensures that the lines of argumentation in the course of a proceeding take the shape of a pyramid – becoming ever more focused on the contentious issues – rather than that of a branched tree, which was not too seldom the case in for example national German litigation.

General guidelines

While this approach is generally very reasonable in light of the aim of procedural efficiency, its application in practice can create headaches for parties and their representatives about what to search for and what to include in their first submissions. Since the details are far from being resolved, the general takeaway is

• Evidence for infringement, that was or could have been made available at the time of filing the statement of claim, risks being rejected if introduced later
• As far as infringement of a dependent claim could be argued, this should be done in the statement of claim
• In case there is already pre-trial exchange of the parties on infringement, evidence, validity, claim construction, prior art etc., this exchange should be fully included and also addressed in the statement of claim
• This also means, that in the absence of such pre-trial exchange, not every conceivable line of claim construction must be presented in the statement of claim, but a short description of the parts of the patent specification and the drawings which support the claimant’s claim construction
• Likewise, not every conceivable evidence must be presented, but every alleged fact should be supported by at least one piece of evidence, and may it just be a written testimony by the party
• The statement of defense must address all arguments, and all reasonably conceivable counterarguments should be included, with the weaker ones at least in a skeleton form
• This also applies to the counterclaim for revocation: all reasonably conceivable combinations of prior art for attacking inventive step should be included, with the weaker ones at least in skeleton form. Dependent claims should also be attacked, as far as possible
• All prior art than can be found, must be found!

The latter point cannot be stressed enough. In a recent order, the CoA confirmed a first instance decision that had rejected an application to amend a counterclaim for revocation, which was filed two days after the counterclaim. The counterclaimant had become aware of additional prior art, that a service provider tasked with researching prior art had seemingly overlooked, as this prior art popped up in an unrelated search of the counterclaimants patent attorney, which however used the same search string as the service provider (2 September 2025, UPC_CoA_807/2025).

Conclusion

This means that when properly researching prior art, not only should a reliable and able external service provider be commissioned, but its results should be double- and crosschecked by attorneys, if the budget allows. This further means that arguments that an external service provider did insufficient work and thus not being initially aware of certain prior art is not the fault of the respective party will likely not be heard, and that therefore not only the general quality of the provider should be considered, but also whether useful prior art might be found in specific domains (i.e. East Asian countries, academic publications) where different service providers might have the edge.

Lastly, this front-loaded approach means for claimants, that when the UPC or a national forum would both be available, specifically the German courts, and at least initial investment in the proceedings shall be on the lower side, the German courts might be more suitable, in order not to risk that a case is lost not because it had no merit, but because the investment could not match the front loading requirements of the UPC.