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.

 

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

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.

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

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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

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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

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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

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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

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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.

 

All Along the Wash­tower: Local Division The Hague Digs in its Heels on Equiva­lence in Washtower v. Defendants

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In the second decision on the doctrine of equivalence before the Local Division The Hague (Washtower v. Defendants, Order delivered on 11. September 2025, UPC_CFI_479/2025) the chamber reiterated the standard it had developed – or rather transplanted – and applied in Plant-e v. Bioo (UPC_CFI_239/2023).

By taking its stance in line with case law in the Netherlands, the judges have planted their flag, leaving a clear line in the sand opposing those that still march to the German tune of equivalence or even those demanding a new standard for the UPC be developed. Inevitably, a showdown at the Court of Appeal is brewing. Until a decision is rendered by the Court of Appeal, uncertainty remains regarding which standard for equivalence will prevail.

So what happened?

In its decision of 22 November 2024, UPC_CFI_239/2023 (Plant-e v Bioo), the Local Chamber in The Hague was the first panel of the Unified Patent Court to implement a standard for reviewing equivalent patent infringement.

According to this standard, a four-step test must be carried out (paragraph 86 et seq., in particular paragraph 88, of the cited decision), which includes the following steps:

  1. Technical equivalence: Does the variant (essentially) solve the same problem as the patented invention and does it (essentially) perform the same function in this context?
  2. Is the extension of the protection of the claim to the equivalent proportionate in terms of providing adequate protection for the patent holder: considering its contribution to the art, and is it apparent to a person skilled in the art from the patent publication how the equivalent element is to be applied (at the time of the infringement)?
  3. Reasonable legal certainty for third parties: Does the skilled person understand from the patent that the invention goes beyond what is claimed in the wording?
  4. Is the allegedly infringing product new and inventive in relation to the prior art? (i.e. no successful Gillette/Formstein objection)

This is in line with Dutch case law. For direct comparison: according to established German case law, the inclusion of an embodiment that deviates from the literal meaning of the patent claim regarding the scope of protection requires three things, according to the principles known from the BGH’s Schneidmesser decision (judgment of 12 March 2002, X ZR 168/00 – Schneidmesser I):

  1. The problem underlying the invention must be solved by means that are modified but objectively equivalent.
  2. Their technical knowledge must enable the person skilled in the arts to find the modified means as equivalent.
  3. The considerations that the person skilled in the arts must make in this regard must be oriented towards the meaning of the technical teaching protected in the patent claims in such a way that the person skilled in the arts considers the different design with its modified means to be an equivalent solution to that covered by the patent.

This results in a three-step rather than a four-step test of the contested embodiment to determine equivalence. In short, the main difference to the Dutch approach is the absence of the criterion of adequate or fair protection for the patent holder, which also includes the aspect of ‘obviousness’ as a second sub-criterion. According to the German (and possibly other) approaches, the only thing that matters is how the contested embodiment relates to the prior art – not the extent to which the patent holder is worthy of protection in this regard.

Now, before the Court of Appeals could rightly raise any doubts as to whether the Dutch standard is the correct one to be applied, both parties in Washtower v. Defendants unanimously referred to the standard applied in the Plant-e v. Bioo decision. The Local Division The Hague consequently doubled down in its preliminary injunctive order delivered on 11. September 2025, stating on pg. 23 f. that

  • a harmonized approach to equivalence is desirable,
  • the bottom line is that a finding of equivalent patent infringement is excluded where there is no technical-functional equivalence,
  • the same applies to the assumption that protection cannot extend to what is not new or inventive over the prior art,
  • legal certainty for third parties and a fair protection for the patentee are mentioned in Art. 1 of the Protocol on the interpretation of Art. 69 EPC and usually return in the doctrines of equivalence in some way or form as developed in the case law of the UPC Contracting Member States.

In light of the above and in the absence of a decision by the Court of Appeal (and because the parties applied the test unanimously), the Local Division the Court saw no reason to deviate from the Dutch test it applied in Plant-e v. Bioo.

Conversely, in June of 2025 the Local Division Mannheim demanded in its decision in DISH v. AYLO (Decision from the 6 June 2025, UPC_CFI_471/2023) that the UPC should develop its own test for equivalency. It slammed the Local Division The Hague’s approach in Plant-e v. Bioo (and subsequently Washtower v. Defendants), where it applied Dutch standards without explaining its reasoning (see paragraph 88, of the cited decision).

The LD Mannheim argued that for actions for which the national material law of Contracting Member States must be applied, the equivalence test of that Contracting Member State must consequently also be applied. For actions for which the material law of the UPCA is to be applied, the UPC should establish its own standard for determining infringement by equivalents, if need be, by recalling the legal traditions of the member states – as it has already established its own standards for direct infringement in line with the UPCA. Without such a uniform approach, the idea of the UPC as a one-stop-shop to combat economically harmful territorial fragmentation of enforcement would be incomplete. This goes for infringement according to the wording as well as infringement by equivalents (see DISH v. AYLO, LD Mannheim, Decision from the 6 June 2025, UPC_CFI_471/2023, mn. 164 ff.)

This approach was now apparently rejected by the LD The Hague in Washtower v. Defendants, though The Hague agrees with the sentiment of harmonization in principle, while other Local Divisions, namely Brussels (Decision from 17 January 2025, UPC_CFI_376/2023, in Dutch) and Mannheim struggle to find and develop a UPC-specific approach to equivalence.

Until a decision is rendered by the CoA and either confirms the Dutch approach or develops its own standard, uncertainty will remain.

Protection of confidential information before the UPC

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Current developments regarding Rule 262A of the Rules of Procedure – protection of confidential information – before the Unified Patent Court

Under Rule 262A of the Rules of Procedure, a party may request the Unified Patent Court (UPC) to grant special protection to certain confidential information or evidence contained in its pleadings by restricting access to such information or evidence to specific persons only, or by prohibiting the use of such information or evidence altogether. In recent months, the Unified Patent Court has issued several decisions that illustrate how it interprets and applies this rule.

Proportionality

On 10 March 2025, the Munich Local Division granted the plaintiff’s request for protection of confidential information (ORD_11652/2025, BioNTech v Promosome) and established a so-called “Confidentiality Club”, which grants access to certain documents only to designated natural persons and legal representatives. However, the return or destruction of these documents after the end of the proceedings was rejected on the grounds that the general protection of confidentiality under Article 58 UPCA and Rule 262A RoP was sufficient. In this decision, the court clarified that it takes into account, in particular, whether the reasons asserted by the applicant significantly outweigh the other party’s interest in unrestricted access to the information (Rule 262A.5 RoP).

Attorney-Eyes-Only

Unlike the Munich Local Division, which insists that at least one natural person per party must have access to the confidential information in accordance with Rule 262A.6 RoP, the Hague Local Division ruled in a decision dated 4 March 2024 (UPC_CFI_239/2023) that access could also be restricted to the defendant’s legal representatives alone. In this decision, the court further stated that the EU Trade Secrets Directive (Directive (EU) 2016/943) is implemented differently in the various contracting states and that the differences in interpretation allow for more flexibility in adapting access to the information to the circumstances of the individual case and the nature of the confidential information in question.

Restriction of access to one person

The Court of Appeal applied similarly strict confidentiality rules in its decision of 3 July 2025 (UPC_CoA_221/2025, UPC_CoA_222/2025, UPC_CoA_223/2025), in which it emphasised that access to confidential information must be limited to what is strictly necessary and upheld the first instance decision, which had restricted access to confidential documents to only one person on the US legal team.

Graded procedure in the CMS

In its decision of 14 February 2024 (UPC_CFI_463/2023), the Local Division in Düsseldorf outlined a graduated procedure for the protection of confidential information. According to this, the CMS (Case Management System of the UPC) provides for protective measures as soon as an application for protection of confidential information is filed, so that the Judge Rapporteur can order provisional secrecy before documents are released. If the application for secrecy of the relevant information is rejected, the applicant must be informed in good time and given the opportunity to comment or withdraw the documents.

Confidentiality of procedural costs

The Central Division in Mannheim dealt with the confidentiality of procedural costs in its decision of 5 June 2025 (UPC_CFI_477/2025), in which it clarified that these are generally not covered by confidentiality under Rule 262A RoP or by attorney-client privilege, unless they provide specific information about the financial capacity of the company, its business strategy or the significance of the patent as a corporate asset. If this is the case, confidentiality may also be ordered with regard to costs incurred by companies for legal services in connection with litigation and patent protection, as this information could provide insight into the importance companies attach to their patents and the risks they take to protect them.

The Central Division in Paris also dealt with the confidentiality of litigation cost information in its decision UPC_CFI_484/2025 of 16 July 2025 (Kinexon Sports & Media v Ballinno B.V.). The court clarified that such information may not be kept secret from the opposing party, as it does not relate to the subject matter of the proceedings and its exclusion would impair the right to a fair trial. Confidentiality under Rule 262A RoP is therefore not justified. However, litigation cost information is certainly worthy of protection from the public as strategically sensitive data. Its disclosure could allow conclusions to be drawn about the internal distribution of resources and the competitiveness of both the claimant and its legal counsel. Confidentiality under Rule 262.2 RoP was therefore permissible. The court also clarified that a request for confidentiality vis-à-vis the opposing party implicitly also included a request for protection from the public.

Conclusion

The recent decisions of the Unified Patent Court on Rule 262A RoP show that confidentiality is not granted across the board, but is carefully weighed against the right to a fair trial. The decisions diverge depending on the type of information and the procedural situation.

Cross-Border Injunctions before the UPC – Dyson v. Dreame

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Cross-Border Injunctions before the Unified Patent Court: Lessons from the Dyson v. Dreame Decision

The Unified Patent Court (UPC) continues to shape the European patent litigation landscape, and its recent decision in Dyson v. Dreame (Final Order, 14th of August 2025, UPC_CFI_387/2025, ACT_20368/2025) offers valuable guidance for both claimants and defendants when it comes to cross-border injunctions. The Hamburg Local Division’s ruling illustrates how the UPC approaches jurisdiction, the role of intermediaries, and the balancing of interests in granting preliminary measures.

Jurisdiction and the Role of Anchor Defendants

A key aspect of the ruling lies in the court’s reliance on the Brussels I recast Regulation (1215/2012/EU) and the UPCA’s jurisdictional framework. The UPC confirmed that it has jurisdiction over patent infringements in all Contracting Member States, regardless of where the defendant is domiciled, provided that the alleged harmful act occurred in a UPC state. This makes the UPC a powerful forum for claimants, allowing them to target non-EU defendants (as well as non-UPC-EU-members) whose products circulate in the Union.
The decision also underscores the concept of an “anchor defendant” (an anchor defendant is a person who is made a defendant to a claim for the primary purpose of vesting jurisdiction to hear the claim in a certain court).
In this case, the court held that an EU-based entity acting as the authorized representative of a non-EU manufacturer could serve as an anchor defendant. The German-based authorized representative of the non-EU manufacturer (Defendant 3) was held to be an indispensable party, making it possible to establish jurisdiction over acts allegedly committed in Spain, a non-UPC Member State (pg. 12 ff., mn. 45 ff. of the order). By linking Defendant 1 (Hong Kong) with Defendant 3 (Germany), the Court extended its reach to the Spanish national part of the patent, relying on Art. 8 (1) Brussels I Recast.
For claimants, this means that carefully choosing the right defendant can expand the geographical scope of an injunction. For defendants, this highlights the risk that group companies or intermediaries can expose the entire corporate structure to UPC jurisdiction.

Intermediaries and Injunctions

Another vital takeaway is the treatment of intermediaries (pg. 13 f., mn. 49 ff. of the order). The court ruled that an authorized EU representative (Defendant 3) — necessary under EU product safety regulations for placing electronics on the market — was not merely a passive service provider. Instead, it was considered indispensable to the distribution chain and therefore subject to injunctions under both the UPCA and national law. The Court emphasized that this is a pre-marketing obligation, not a mere after-sales service. Accordingly, Defendant 3 could be subjected to an injunction as an intermediary under Art. 63 (1) para. 2 UPCA and Art. 9 (3) Directive 2004/48/EC.
This recognition of intermediaries as potential targets of injunctions broadens the range of parties that claimants can pursue.
Defendants, on the other hand, must be aware that even if they are not directly importing or selling products, their regulatory or logistical roles may still suffice to make them subject to UPC measures. This increases the compliance risks for EU-based subsidiaries, distributors, and representatives of non-EU companies.

Balancing of Interests and Market Impact

The UPC applies Article 62 (2) UPCA and Rule 211.3 RoP to weigh the parties’ interests. In this case the risk of irreparable harm and market disruption was central (pg. 35 f., mn. 138 ff.). Dyson successfully argued that Dreame’s lower-priced, allegedly infringing products directly threatened its market share and pricing structure. The court agreed, stressing that the patented feature was a core selling point and that the loss of market share could not be adequately compensated by damages later.
For claimants, this confirms that demonstrating urgency, direct competition, and the risk of market erosion will be decisive in obtaining preliminary injunctions. Defendants, in turn, should focus on countering these arguments by emphasizing alternative competition, challenging the urgency of the request, or raising serious doubts on the validity of the patent.

Practical Implications

For claimants, the decision shows that the UPC is willing to grant wide-reaching injunctions, even extending to non-UPCA territories like Spain, provided that jurisdiction can be anchored via intermediaries. Speed in filing and strong evidence of infringement and market harm remain essential.
For defendants, the ruling is a reminder that their entire European distribution structure may come under scrutiny. Being designated as an EU representative or intermediary can expose them to injunctions, even if they are not engaged in direct sales. Coordinating defense strategies across group companies and contesting the proportionality of measures will be crucial.

Conclusion

The Dyson v. Dreame decision demonstrates the UPC’s willingness to assert broad jurisdiction and grant cross-border injunctions. Claimants should carefully leverage anchor defendants and intermediaries to maximize the territorial reach of injunctions. Defendants, conversely, must prepare for the heightened risks of UPC litigation, especially when operating in complex corporate and distribution networks. The ruling underscores that in UPC practice, strategic foresight and procedural speed are just as important as substantive patent arguments.