Changes to the infringing product in ongoing UPC-proceedings

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.