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 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.

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.

Legal framework and case law considerations

The initiation of proceedings before the Unified Patent Court (UPC) requires that a Statement of Claim is validly served on the defendant. This procedural act has significant importance, as it triggers key deadlines, including the period within which the defendant must submit a Statement of Defence.

Legal framework under the rules of procedure

Rules 270–279 of the UPC Rules of Procedure establish a sequence of service methods. The applicable method depends on whether the defendant is located within a UPC contracting EU member state or outside the EU.

Service within UPC contracting member states

Where the defendant is based within a contracting EU member state, the rules envisage a hierarchy of service options. It is generally advisable to proceed through this hierarchy in the order provided.The rules first refer to electronic service on the defendant or their representative. If this does not succeed, recourse can be made to other methods recognized under EU law, such as registered mail. Should these also fail, service may follow the methods available under the national law of the relevant member state.

The choice of service address depends on the defendant’s legal form. For companies, it would typically be the statutory seat, principal place of business, or central administration; for individuals, the usual or last known residence. When multiple defendants are involved, each must be served in accordance with the applicable rules for their location.

Service outside the EU

For defendants located outside the EU, the procedural framework largely mirrors that for service within the EU, but with reliance on international instruments such as the Hague Service Convention. Where these mechanisms prove unsuccessful, the court may—under Rule 275.1 RoP—permit an alternative method of service. Such permission generally requires evidence that conventional methods have been exhausted.

Case law illustrating the application of service rules

The evolving case law of the Unified Patent Court (UPC) provides important guidance on how its rules on service of a Statement of Claim are applied in practice. The Rules of Procedure, particularly Rules 270–279, set out a hierarchy of service methods. Recent decisions from both the Court of First Instance and the Court of Appeal show that the court interprets these provisions strictly, yet with a degree of flexibility when conventional means of service have proven impossible.

One of the early and significant decisions in this area is NEC v. TCL (UPC_CoA_69/2024 and UPC_CoA_70/2024), decided by the Court of Appeal on 29 July 2024. The court was asked to consider whether alternative service under Rule 275.1 could be used without having first attempted service through the standard procedures outlined in Rules 270–274. The Court of Appeal confirmed that the structure of the Rules requires a genuine, procedurally valid attempt at service via the primary methods before alternative measures may be considered. Attempts such as sending documents by email to an executive, or posting notices at the local division, were found insufficient in the absence of prior formal steps or explicit consent from the recipient. The decision also made clear that the UPC is not bound by pragmatic service practices developed in national courts, and that such practices do not create precedents within UPC proceedings.

A comparable insistence on procedural rigour can be seen in Daedalus v. Xiaomi & MediaTek (UPC_CoA_183/2024), decided by the Court of Appeal on 5 August 2024. The claimant had sought to serve Chinese and Taiwanese defendants via their subsidiaries located in Germany, relying on Rule 271.5(a), which permits service on companies with a statutory seat, principal place of business, or central administration in a Contracting Member State. The court rejected this approach, clarifying that the presence of an affiliated company in the EU does not satisfy the requirements for serving a foreign defendant. Instead, service must be effected according to the provisions for parties outside the UPC’s Contracting States, namely Rules 273 and 274, which direct parties towards international service channels such as the Hague Service Convention. The ruling reinforced the principle that corporate group relationships cannot be used to bypass the prescribed service hierarchy.

Flexibility in the court’s approach is clearly illustrated in air up group v. Guangzhou Aiyun Yanwu Technology (UPC_CFI_508/2023 and UPC_CFI_509/2023), decided by the Munich Local Division on 21 January 2025. In this case, all attempts at conventional service, including those under the Hague Service Convention, had failed. Faced with a defendant in China who could not be reached through ordinary channels, the court applied Rule 275.2 to deem earlier, unsuccessful attempts as constituting valid service. This pragmatic application of the rules extended to accepting the publication of the default judgment on the UPC’s own website as a form of effective service. The decision illustrates that, while the court expects strict compliance with the hierarchy of service methods, it is prepared to recognise exceptional measures when it has been convincingly shown that no viable formal route remains.

Practical implications

Taken together, these cases reveal a consistent pattern in UPC jurisprudence. The court gives priority to procedural orthodoxy, requiring parties to follow the established sequence of service methods before seeking alternative approaches. National court practices, even if more expedient, do not override the UPC’s framework.

At the same time, the court has demonstrated a willingness to accept non-traditional forms of service in rare cases where conventional means have been exhausted, and further attempts would be futile. This combination of procedural discipline and pragmatic flexibility reflects the UPC’s aim of balancing due process for defendants with the need to ensure that proceedings can move forward in a reasonable timeframe.