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Party disposition at the UPC: Settlement, withdrawal and the conditional revocation counterclaim

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Who shapes a UPC case – and who ends it? Increasingly, the answer is: the parties.
Court of Appeal, order of 16 July 2026, UPC-CoA-40/2026 — Emboline v AorticLab (on appeal from LD Munich, 13 January 2026, UPC_CFI_628/2024).

How UPC proceedings are shaped, and how they end, is largely for the parties to decide. The Court imposes only two limits: it will not confirm an agreement whose content it does not know, and a patent cannot be revoked or limited by settlement.

Termination of Proceedings by Settlement

The principle of party disposition enshrined in Art. 76(1) and Art. 43 UPCA  under which the Court may not award more than has been requested  means that the parties may terminate their proceedings by settlement at any time. Contrary to what one might initially assume, this is also possible without applying for a decision of the Court confirming the settlement within the meaning of R. 365 RoP¹. Confirmation by the Court is therefore an option, not an obligation; its value lies in enforceability, since under Dreame v Dyson a decision confirming a settlement under R. 365.1 RoP may be enforced in the same way as a final decision of the Court². The parties must, however, disclose what they have agreed: Astellas requires particulars of the actual terms of the settlement, because 11.2 RoP calls for confirmation of those terms (1).

A point that often matters in practice is the confidentiality of the terms, in particular where the settlement is communicated to the Court under R. 365 RoP. Under Dreame (2), the details of the settlement are treated as confidential upon request under R. 365.2 RoP, the confirming decision is entered in the register subject to that reservation under R. 365.3 RoP, and a further order is required only under R. 262.6 RoP where a member of the public applies for access to the file. What is protected, however, is only the content, not the fact of settlement itself: that the parties have settled, and that the Court has confirmed this, becomes public through the entry in the register. A party wishing to avoid even that cannot opt for confirmation, but must proceed by way of withdrawal of the action under R. 265 RoP; the register will then show only the termination of the proceedings, and not a settlement. The price is forgoing direct enforceability under R. 365.1 RoP; the agreement remains purely contractual and must be enforced separately in the event of a dispute.

Independently of all this, the Agreement sets a substantive limit, and does so solely as regards the permissible content of a settlement: the Nordic-Baltic Regional Division held in Edwards v Meril that Art. 79 UPCA provides that a patent may not be revoked or limited by way of settlement (3). What remains permissible under R. 11.2 RoP is confirmation of an undertaking by the proprietor to limit the patent or to surrender it.

Withdrawal of the Action under R. 265 RoP

The requirements for terminating proceedings by withdrawal of the action were summarised by the Munich Local Division in NEC v TCL: withdrawal is available as long as no final decision has been given, and is inadmissible where the other party has a legitimate interest in a decision of the Court (4). Express consent of the opposing party is not required; under Bentley v Network Systems Technologies it suffices that an opportunity to comment was given and no objection was raised within the time limit (5). Final decision means a decision that has become res judicata, which is why the Court of Appeal clarified in Avago v Tesla that the application may also be made on appeal and becomes inadmissible only once the decision is final (6); it confirmed this in Lepu v Occlutech (7). Because applications to amend are merely ancillary, it also follows that withdrawal of the revocation counterclaim renders applications to amend the patent devoid of purpose. As a consequence, a patent revoked at first instance is revived where the appeal is withdrawn by way of settlement.

Conditional Revocation Counterclaim

That the parties determine not only the end of the proceedings but also their shape is illustrated by Emboline v AorticLab. The defendant had initially applied for revocation of the patent in its entirety under Art. 65(2) UPCA and R. 25 RoP with effect for all Contracting Member States in which it has effect, but then stated at the oral hearing that it would not pursue the counterclaim as filed, but would instead make it conditional upon a finding of infringement; because the Munich Local Division found no infringement, the condition was not met and the counterclaim was left undecided (8).

The Court of Appeal considers this approach permissible, reasoning by way of a balancing of interests: even though R. 263.3 RoP is not directly applicable, because it is not the claims but the action as a whole that is limited by the condition, the balance of interests corresponds to that under R. 263.3 RoP; as there is no provision governing the situation, that rule is to be applied by analogy, so that an unconditional request by the counterclaimant to make its counterclaim conditional upon a finding of infringement must be granted. Here too, therefore, it is the party’s request that determines the scope of the proceedings.

Of greater practical importance is what the Court clarifies as to the further course of proceedings:

  • The counterclaimant may appeal against the failure to decide its counterclaim; it has a legitimate interest despite the non-decision having been in accordance with its own request, because if the finding of non-infringement were set aside the condition would be met, and the first-instance finding that it had not occurred would have to be set aside.
  • It may make the appeal conditional under 220.1(a) RoP upon the infringement claimant lodging an appeal; if no appeal is lodged within the time limit under R. 224 RoP, the conditional appeal is deemed not to have been lodged.
  • On appeal the counterclaim remains conditional unless and until the counterclaimant applies to remove the condition; such an application requires leave under 263 RoP by analogy and R. 222.2 RoP.
  • If the condition is met by a finding of infringement by the Court of Appeal, that Court will as a rule not remit the counterclaim but decide it itself under 75(1) UPCA and R. 242.2(b) RoP.

The case also illustrates the pitfalls. AorticLab had not appealed against the failure to decide, and the time limit under R. 224.1(a) RoP had expired; because the position was clarified only by this order, the Court points to re-establishment of rights under R. 320 RoP. The costs consequences remain open: the Munich Local Division had regarded the costs of the counterclaim as unnecessary where the condition was not met and imposed them on AorticLab under Art. 69(3) UPCA; the Court of Appeal recites this without correcting the costs decision.

Practical Consequences

  • Claimant side: before seeking confirmation of a settlement, weigh enforceability against discretion – confirmation protects the terms but makes the settlement as such visible in the register; only withdrawal avoids that as well.
  • Defendant side: apply formally for the condition attaching to the counterclaim; a party that makes its counterclaim conditional and prevails on non-infringement should also lodge a (conditional) appeal against the non-decision as a precaution, and factor in the costs risk of the undecided counterclaim.
  • Settlement on appeal: bear in mind that withdrawal of the revocation counterclaim renders the applications to amend devoid of purpose and that a patent revoked at first instance is
  • Enforcement pending appeal: expect that it may have to be unwound: under NanoString v 10x Genomics, setting aside a preliminary injunction generally has retroactive effect and removes the basis for any subsequent penalty payment decision (9).

The line of authority is thus increasingly clear: the parties decide on the shape and the end of the proceedings, and the Court confirms, protects and enforces their agreement. Whether the costs burden attaching to the conditional revocation counterclaim will survive review by the panel remains to be seen.

Footnotes

(1) CD Munich, order of 23 July 2024, UPC_CFI_75/2023 and UPC_CFI_80/2023 Astellas v Healios; also on R. 365.1 in conjunction with R. 11.2 RoP.
(2) LD Munich, decision of 28 May 2026, UPC_CFI_962/2026 Dreame v Dyson; also on 365.2, R. 365.3 and R. 262.6 RoP.
(3) Nordic-Baltic RD, order of 21 July 2025 Edwards Lifesciences v Meril Lifesciences and others.
(4) LD Munich, order of 17 January 2025 NEC v TCL Deutschland and others.
(5) Order of 14 January 2025 Bentley Motors v Network Systems Technologies.
(6) Court of Appeal, order of 15 January 2025 Avago v Tesla Germany and others, headnote (withdrawal on appeal; applications to amend become devoid of purpose); likewise order of 24 January 2025, UPC_CoA_505/2024   DexCom v Abbott.
(7) Court of Appeal, order of 6 May 2026, UPC_CoA_900/2025 Lepu Medical v Occlutech.
(8) Court of Appeal, order of 16 July 2026, UPC-CoA-40/2026 Emboline v AorticLab, paras. 2 and 4; decision under appeal: LD Munich of 13 January 2026, UPC_CFI_628/2024.
(9) Court of Appeal, order of 10 December 2024 NanoString Technologies v 10x Genomics.

Scales of justice representing the Unified Patent Court (UPC) and current developments in European patent litigation

Court of Appeal extends jurisdiction of the Central Division for infringement actions

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New jurisdiction rules open up additional litigation options. Patent holders now have more flexibility in choosing a court.

In public discourse around the UPC, the Local Divisions are associated with infringement actions and the Central Divisions with stand-alone nullity actions.

However, the Central Division (with sections in Paris, Munich and Milan, whereas their competence depends on the IPC class of the patent-in-suit) is competent to hear infringement actions in case the defendant is domiciled outside of UPC territory and also lacks a principal or any place of business thereon (Art. 33 para.1 subpara 3 UPCA).

As there is no scenario where the Central Division is competent to hear an infringement action but a Local (or Regional) Division is not (as an infringement action requires an actual infringement or threat thereof, meaning a Local Division is always competent to hear the case pursuant to Art. 33 para.1 lit.a) UPCA), a patent holder has the right to choose between a Local Division and the Central Division in scenarios where the Central Division is competent.

However, in light of the apparent limitations above (no domicile or place of business of the defendant in UPC territory), it appeared that the number of scenarios where the Central Division is competent in the first place was limited, since usually there is a multitude of defendants (in order to cover the whole supply chain), and usually at least one of the defendants has its domicile or place of business on the territory of the UPCA.

Therefore, the question whether Art. 33 para.1 subpara 3 UPCA also applies in cases where at least one of the defendants is domiciled outside of UPC territory, even if the other defendants are domiciled within, reached the Court of Appeal.

The Court of Appeal answered this question with a yes (UPC-CoA-4/2026. UPC-CoA-13/2026, order of 22 June 2026[1]. The provision was held to be not an exception but an alternative to the jurisdiction of the Local Divisions, as its wording contains no corresponding limitation. The anchor-defendant mechanism of Art. 33 para.1 lit.b) UPCA was argued to apply by way of analogy. The stated purpose is to avoid parallel proceedings and conflicting decisions as otherwise cases might have to be brought before several Local Divisions.

The Court of Appeal therefore extends the competence of the Central Division significantly.

For patent holders who now have the right to choose between a Local Division and the Central Division, specifically the following strategic considerations apply:

  • Familiarity with and expertise of the legal judges of the Central Division: this applies especially where the competent Local Division would be a division with a low case number, where the case management and legal opinions of the judges might not be easily foreseeable
  • Language: before the Central Division, the language of the patent-in-suit applies. This may e.g. be a consideration for German SMEs who have filed their EPs in German, and where German is not a language which the competent Local Division offers.

Source: [1] https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/ORDER_VALEO%20v%20BOSCH_004%20and%20013-2026_2026-06-22_FR_Signed.pdf

Scales of justice representing the Unified Patent Court (UPC) and current developments in European patent litigation

Local Division Dusseldorf endorses the Plant-e v. Arkyne test for assessing equivalence

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The validation of the Plant-e-Test by a German Local Division paves the way for the standardization of equivalence rulings at the UPC.

In Wonderland v. Cybex, concerning the infringement of patents relating to child seats and strollers (UPC_CFI_807/2024 and UPC_CFI_334/2025, decision of 27 May 2026), the Local Division (LD) Düsseldorf confirmed that the test for assessing equivalent infringement developed by the LD The Hague (UPC_CFI_239/2023, decision of 22 November 2024, para. 88 – Plant-e v. Arkyne) forms a coherent whole and is as such suitable for the examination of equivalence (Headnote 1).

This makes Wonderland v. Cybex one of the first UPC decisions to examine equivalence on the merits – and the first in which a German Local Division applies the largely Dutch-inspired Plant-e framework rather than the competing German Schneidmesser approach. The position of the Plant-e test as the emerging UPC standard has thereby been strengthened considerably, although the Court of Appeal (CoA) has yet to rule on the issue.

Competing approaches to equivalence

The Plant-e test consists of four questions: (1) Technical equivalence – does the variation solve (essentially) the same problem as the patented invention and perform (essentially) the same function? (2) Fair protection – is extending protection to the equivalent proportionate to a fair protection for the patentee, in view of his contribution to the art and of whether it is obvious to the skilled person from the patent how to apply the equivalent element (at the time of infringement)? (3) Reasonable legal certainty for third parties – does the skilled person understand from the patent that the scope of the invention is broader than what is claimed literally? (4) Is the allegedly infringing product novel and inventive over the prior art?

The German Schneidmesser test (BGH, decision of 12 March 2002, X ZR 168/00 – Schneidmesser I) asks: (1) Equal effect – do the modified means objectively perform essentially the same function as the claimed feature? (2) Findability – was the skilled person able, at the priority date and without inventive considerations, to identify the modified means as performing that function? (3) Orientation along the patent claim – are the skilled person’s considerations oriented along the claim such that the modified means are regarded as an equivalent solution within the meaning of the patent? A fourth question, sometimes treated as part of the canon, asks whether the description discloses the modified means but ultimately excludes them, whether by omission from the claim or by outright rejection.

Where the two tests actually diverge

The decision contrasts the “holistic” Dutch approach with the “legal-technical” German approach. In practical terms, this shorthand translates into three concrete differences:

First, the reference date.

Under Schneidmesser, the modified means must have been findable at the priority date; under Plant-e, it suffices that applying the equivalent element was obvious at the time of infringement. Post-priority technical knowledge can therefore support equivalence under the Dutch test but not under the German one – structurally, Plant-e is the broader standard, and this difference alone can be outcome-determinative, particularly for older patents in fast-moving fields.

Second, the yardstick: claim primacy versus fairness balancing.

The decisive third Schneidmesser question ties equivalence strictly to the patent claim: even a technically equivalent, readily findable variant falls outside the scope of protection where the claim wording reflects a deliberate narrowing choice by the patentee. Plant-e has no such claim-orientation filter; it instead balances fair protection for the patentee against legal certainty for third parties. Put pointedly: in borderline cases the German test asks what the claim permits, the Dutch test asks what result is fair.

Third, the role of the prior art.

Plant-e integrates the novelty and inventiveness of the attacked embodiment over the prior art directly into the test (question 4). In German practice, this corresponds to the separate Formstein defence, which must be raised by the defendant and is not part of the equivalence test itself – with corresponding consequences for the structure and burden of the parties’ pleadings.

The German clarification

On technical equivalence, the LD Düsseldorf clarified that the claimant must not focus solely on the objective problem of the patent in suit, but must demonstrate the function of each substituted feature in achieving that objective and explain why the variation performs essentially the same function (Headnote 2). This mirrors the first Schneidmesser question and reads a distinctly German, feature-by-feature technical discipline into the first question of the Dutch test. On the second Plant-e question, the panel held – rather self-evidently – that applying the equivalent element is not obvious where it would require a complete redesign of the claimed device (Headnote 3, para. 263). Beyond this, the court did not deviate from the approach of the LD The Hague.

Endorsement – with a caveat

The endorsement by a German Local Division carries weight. One passage, however, counsels against reading the decision as a landmark ruling: the panel expressly noted that there is no indication that applying a different standard than the Plant-e test would have produced a different result in the case at hand (para. 240). The adoption of the Dutch framework was thus outcome-neutral; the panel did not decide that Plant-e must prevail where the two tests genuinely diverge – for instance on the reference date. That question remains open, ultimately for the CoA. The decision is therefore best read not as a defeat of the German approach, but as a step towards convergence: a German Local Division applying the Dutch framework while injecting German technical rigour into its first question. The direction of travel towards a uniform UPC test for equivalence has become clearer; its final destination has not yet been fixed.

Richterhammer auf digitalem Hintergrund als Symbol für aktuelle Entwicklungen beim Einheitspatentgericht (UPC) und im europäischen Patentrecht

Fujifilm v Kodak: UPC Court of Appeal Provides Further Guidance on Long-Arm Jurisdiction

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With its decision in Fujifilm v. Kodak (UPC_CoA_312/2025, UPC_CoA_333/2025, UPC_CoA_880/2025, and UPC_CoA_882/2025), the UPC Court of Appeal has established a structured framework for future long-arm disputes.

Introduction

In its decision of 2 June 2026 in Fujifilm v Kodak (UPC_CoA_312/2025, UPC_CoA_333/2025, UPC_CoA_880/2025 and UPC_CoA_882/2025), the UPC Court of Appeal further developed the practical framework for claims concerning non-UPC designations of European patents.

The starting point is no longer whether the UPC may, in principle, deal with such claims. Following the CJEU’s decision in BSH v Electrolux and the subsequent UPC case law, this question has largely been answered. The more relevant issue is how such claims are to be assessed once relief extending beyond UPC territory is sought.

For a discussion of the foundations laid by BSH v Electrolux and the first UPC decisions applying that judgment, we refer to our earlier articles:

Background: Kodak’s preliminary injunction proceedings

The case arose from proceedings between Fujifilm and Kodak concerning printing plate technology. The Mannheim Local Division had granted Fujifilm injunctive relief, including relief extending to the United Kingdom.

Kodak appealed. While the Court of Appeal ultimately set aside the injunction, the broader significance of the decision lies less in the outcome of the preliminary injunction proceedings and more in the Court’s treatment of long-arm claims generally.

The judgment demonstrates that, once jurisdiction has been established, claimants remain subject to strict requirements regarding proof, attribution and the applicable foreign law.

A more structured framework for long-arm claims

The decision demonstrates that long-arm litigation before the UPC is increasingly developing into a distinct procedural framework. Rather than focusing exclusively on jurisdiction, the Court addresses a broader set of questions that arise once claims concerning non-UPC patent designations are brought before the UPC.

The Court’s reasoning suggests that at least four issues must be analysed separately:

  • whether the UPC has jurisdiction;
  • whether the relevant foreign patent designation should be treated as valid for purposes of the proceedings;
  • whether the alleged foreign acts can be attributed to the respective defendant; and
  • whether infringement in the foreign territory has actually been established under the applicable law.

This structured approach is likely to influence future long-arm cases beyond the specific facts of the Kodak dispute.

Infringement remains a territory-specific inquiry

One of the important practical messages concerns proof of infringement.

The Court appears unwilling to infer infringement in a non-UPC territory merely because comparable acts have been established within UPC territory. Rather, the claimant must establish the relevant acts in the foreign state and demonstrate why those acts satisfy the applicable legal requirements.

This maintains the evidentiary burden in long-arm cases and underlines that jurisdiction does not create any presumption in favour of infringement.

Group structures do not eliminate the need for attribution

The decision also highlights the importance of attribution, particularly in disputes involving corporate groups.

The Court’s reasoning suggests that activities carried out by one group company cannot automatically be attributed to another entity merely because both belong to the same corporate structure.

Claimants seeking extra-territorial relief must therefore carefully establish the role of each defendant and the connection between the alleged foreign acts and the specific entity against whom relief is sought.

Foreign law remains relevant

The decision further confirms that foreign law remains relevant in long-arm litigation and may be decisive to the outcome of the case.

At the same time, the Court did not address the extent to which parties may proceed on the basis that the laws of EPC states lead to materially similar results unless specific differences are identified by the opposing party. Certain first-instance UPC decisions have adopted approaches that reduce the need for extensive proof of foreign law unless concrete divergences are raised. The Court of Appeal neither endorsed nor rejected such approaches.

The requirements for pleading and proving foreign law therefore remain an evolving aspect of UPC long-arm litigation.

As the Kodak proceedings illustrate, a claimant may overcome jurisdictional objections and still fail because the substantive requirements of the applicable law have not been met.

Practical implications

The decision marks an important shift from jurisdictional theory to jurisdictional application.

For claimants, the focus will increasingly be on proving foreign acts, identifying the responsible entities and addressing issues of foreign law.

For defendants, the judgment confirms that even where jurisdiction itself is difficult to challenge, substantial defences remain available, including challenges based on attribution, proof and applicable national law.

The Court of Appeal therefore appears to be moving long-arm litigation away from abstract jurisdictional debates and towards a more conventional merits-based analysis.

Conclusion

The significance of Fujifilm v Kodak lies less in the outcome of the preliminary injunction proceedings and more in the guidance it provides for future long-arm litigation.

The Court of Appeal confirms that the discussion has moved beyond the question whether the UPC may hear claims relating to non-UPC patent designations. The more important question is how such claims are to be assessed.

By emphasising the separate roles of jurisdiction, validity, attribution and foreign-law infringement analysis, the Court provides a more structured framework for future long-arm disputes. For litigants, this may ultimately prove more important than the outcome of the Kodak case itself.

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No infringement without fixation – The UPC Court of Appeal on functional claim construction and entering an appearance in electronic proceedings

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HUROM v. NUC/WARMCOOK: UPC_CoA_409/2025, 410/2025, 420/2025 – decision of 27 March 2026

In this decision, the Court of Appeal of the Unified Patent Court clarifies that functional claim features must not be construed in isolation from the technical operation disclosed in the patent description – and on this basis sets aside, in its entirety, a first-instance infringement judgment of the Mannheim Local Division. The decision also addresses a procedural question of practical relevance: merely logging into the Case Management System does not constitute entering an appearance within the meaning of the Brussels Ia Regulation, which takes precedence over the preclusion rule in R. 19.7 RoP. The case thus provides useful guidance on both claim construction and international jurisdiction at the UPC.

Korean juicer manufacturer HUROM brought proceedings for infringement of European patent EP 2 028 981 (a vertically oriented juice extractor) against the NUC group of companies (NUC Korea and its German subsidiary NUC Europe) and French distributor WARMCOOK, who marketed the “AUTO10” slow juicer across several European countries. In separate proceedings, HUROM also sought damages against NUC Korea for infringing acts in Turkey.

Claim construction – functional features and the role of the description

The Court of Appeal confirms and develops the principles established in NanoString v. 10x Genomics (UPC_CoA_335/2023). The description and drawings must not only be used to resolve ambiguities but must always be used as explanatory aids for the interpretation of the patent claim (para. 21 of the present decision).

Of interest is how the Court of Appeal applies this principle here: it derives from the function stated in the claim (to press, grind and extract juice) an implicit technical requirement – vertical fixation – that is not expressly mentioned in the claim wording. Functional claim features are thus not construed at the UPC in isolation based on their wording, but in conjunction with the technical operation disclosed in the description. In practice, this means the description can influence the scope of protection in both directions – broadening it where it supports a wide understanding, but also narrowing it where it discloses technical prerequisites that the skilled person would consider necessary.

Relationship between independent and dependent claims

The decision also contains a useful clarification on the relationship between independent and dependent claims. The first-instance court had treated the engagement hooks mentioned in dependent claims 6 and 12 as an additional feature going beyond claim 1. The Court of Appeal corrects this: the dependent claims specify the means of achieving the fixation, not the fixation itself, which is already inherent in the independent claim. This distinction is likely to be relevant in future cases involving functional features with associated dependent claims.

Appellate review of first-instance decisions

The case shows that the Court of Appeal is prepared to fully revise first-instance claim construction – with the consequence that an infringement judgment, together with all its remedies, is set aside. For litigants, this underscores the importance of the appellate level at the UPC and the need to present, already at first instance, an interpretation that can withstand scrutiny on appeal.

Interplay between Brussels Ia Regulation and the RoP

The decision also addresses the interplay between the preclusion rule in R. 19.7 RoP and Art. 26(1) Brussels Ia Regulation regarding international jurisdiction.

The Court of Appeal upheld the finding that the UPC lacked jurisdiction over infringing acts in Turkey. NUC Korea had not filed a timely Preliminary Objection pursuant to R. 19 RoP, but had challenged jurisdiction in its Statement of Defence – which, in the Court’s view, sufficed to preclude a finding of entering an appearance. The Court set out three headnotes:

  • First, merely logging into the CMS does not constitute entering an appearance – it is a purely technical access step, not a deliberate procedural act.
  • Second, an appearance within the meaning of Art. 26(1) Brussels Ia Regulation is only entered when the defendant lodges its first statement – a Preliminary Objection or the Statement of Defence. Where the defendant challenges jurisdiction in that first statement, there is precisely no entering of an appearance.
  • Third, Art. 26 Brussels Ia Regulation prevails over the preclusion rule in R. 19.7 RoP: even without a timely Preliminary Objection, international jurisdiction may be challenged in the Statement of Defence without the missed deadline being treated as entering an appearance.

Art. 26 Brussels Ia Regulation does not preclude the establishment of jurisdiction through entering an appearance – on the contrary, the provision expressly contemplates this. What the decision clarifies, however, is from what point such an appearance can arise at all, and that R. 19.7 RoP cannot displace this concept, which must be interpreted autonomously under EU law. The Court distinguishes between the technical act of accessing the system (logging into the CMS) and a deliberate procedural step (lodging the first statement), establishing the primacy of the Brussels Ia Regulation over the RoP. This gives defendants domiciled in third states assurance that a missed Preliminary Objection does not automatically establish international jurisdiction.

Key takeaways

For claimants:

  • A first-instance court’s construction of individual claim features provides no guarantee of stability on appeal – the Court of Appeal conducts its own comprehensive interpretation.
  • When assessing infringement under functional claim features, particular care must be taken to verify that the attacked embodiment fulfils the entire claimed function, including technical requirements derived from the description.
  • For actions against third-state defendants, jurisdiction should be secured early and independently of R. 19.7 RoP.

For defendants:

  • The description and disclosed embodiments can significantly influence claim construction – including in the defendant’s favour, by narrowing the scope of protection.
  • A challenge to international jurisdiction remains available in the Statement of Defence even without a prior Preliminary Objection, without this constituting entering an appearance.
  • Merely logging into the CMS does not establish jurisdiction – nevertheless, jurisdictional objections should be raised as early and as unambiguously as possible.

 

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

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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.

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

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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.

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CoA clarifies damages in Bhagat/Oerlikon

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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.

 

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

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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

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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.