Below, Prof. Willem Hoyng provides his unfiltered views on the decisions that were published on the website of the Unified Patent Court (“UPC”) last week. His comments offer a unique insight into the UPC’s case law, as he chairs the Advisory Board of the UPC and participated in drafting the Rules of Procedure of the UPC.
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26 May 2025
Central Division Munich, Baussmann v Raimund Beck
Amendment of patent
The JR
The JR orders the parties, starting with the answer of defendant, to upload all written submissions in the workflow “Request for amendment of a patent” before 4 June 2025. This will give claimant the possibility to file a rejoinder to the reply to the defence to the request for amendment of the patent.
Whether a request to amend the patent has to be made as a separate request will be decided during the interim conference or during oral argument.
Comment
- According to the Rules (as I read them) the Statement of Defence includes a counterclaim for revocation if (one of) the defence(s) is the invalidity of the patent
(R. 25.1 RoP). However, it is also clear that an inter partes invalidity defence without requesting revocation is not possible. In the meantime, the Court of Justice in the European Union (“CJEU”) has decided in BSH Hausgeräte v Electrolux that with respect to European patents granted for EU-non-UPC countries the UPC does not have jurisdiction with respect to a claim for revocation but can deal with an invalidity defence inter partes. I think that despite R. 25.1 RoP, the defendant should in such situations be able to invoke the invalidity inter partes. - According to R. 30 RoP, the defence to the counterclaim may include an application to amend the patent. So it is certainly not necessary to file a separate application for amendment of the patent.
- From R. 30 RoP, it also becomes clear that an amendment does not always require auxiliary requests (only when “applicable and appropriate”). An amendment consisting of restricting the patent to one or more of the (already granted) subclaims does not require an auxiliary request and cannot be subject of an Art. 84 EPC attack (“clarity”).
27 May 2025
Local Division Düsseldorf, Grundfos v Hefei
Rectification of judgment
Background
Claimant asks for correction of the judgment.
The Court
The Court grants the request of claimant.
Comment
Although the Court says nothing about it, it seems clear that what is corrected qualifies as a “clerical mistake or an obvious slip”! (See R. 353 RoP)
28 May 2025
Paris Central Division, Aylo v Dish
Added matter
Background
- The revocation action started on 15 April 2024.
- An infringement action is pending in a national court in Germany.
- Opposition proceedings are scheduled for 4 and 5 June 2025.
- The defendant filed (further) auxiliary requests with its rejoinder which were not admitted as being late.
Decision of the Court
- The claimant only requested revocation for Germany. The Court considers that possible, among others referring to Art. 76(1) UPCA which states that the Court should not award more than requested.
- The Court refuses to stay the proceedings and gives a solid reasoning for that refusal which was requested by the defendant during the oral hearing. The court mentions the claimant’s interest for a timely judgment and the advanced stage of the proceedings.
- The Court first describes in detail the technical background and the patent (relating to adaptive-rate content streaming and a method for streaming videos from servers for play back on a content player).
- The Court refers to the decisions by the Court of Appeal Nanostring (UPC_CoA_335/2023) and Hanshow (UPC_CoA_1/2024) with respect to the principles of claim interpretation.
- The Court defines the skilled person (“a legal fiction”) and states that parties in fact agree on the skilled person.
- Regarding added matter, for the correct criteria the Court cites and refers to the decision of the Court of Appeal in Abbott v Sibio (UPC_CoA_382/2024). The Court states that as the patent is based on a divisional application the contents of the claim have to be included in each previous application.
- The Court notes that the claim of the patent as granted differs substantively from the claim of the original PCT applications and that the wording of certain features (including feature 1.7) is nowhere to be found.
- After a careful analysis, the Court concludes that feature 1.7 cannot be found in the parent application and that the patent is invalid for added matter.
- None of the 16 auxiliary requests which were admitted introduced an amendment that could overcome the added matter problem.
Comment
- The Court gives various reasons why you can restrict your claim for revocation to one country.
a. I agree with the Court that Art. 34 UPCA defines the possible scope of a judgment but does not mean that you cannot ask for less than a decision for all UPC countries (where the patent is valid).
b. I do not think that R. 44 (d) RoP is written for this situation. This provision makes it possible to limit the extent of the revocation of the patent. In other words, one can for instance only ask for the revocation of claim 1 (because one does not infringe the more limited subclaims). This has nothing to do with the question whether or not you have to ask for a revocation for the whole of the UPC.
c. Art. 5(2) of the Brussel I bis Regulation (1215/2012) in my opinion also does not provide an argument. That Regulation is an EU instrument with respect to Unitary Patents which does not deal with bundle patents. I cannot see how that provides guidance for the UPCA which is not an EU instrument.
d. The “ultra vires” argument (i.e. the Court cannot grant more than what is requested) at first glance seems strong. However, the question should be whether such a claim (for revocation of only one of the bundle patents granted for UPC countries) is admissible. Does this not go against the principles underlying the UPC which is, in my opinion, to see the UPC as one territory as much as possible, in order to avoid multiple national proceedings. It seems to go against that principle to allow a split up of the UPC in multiple different parts without any necessity at the will of the claimant. There is also no valid reason for such pick-and-choose attitude, also because this means that in the same UPC jurisdiction patents which have been held invalid by the UPC survive in other UPC countries. What is going to happen if tomorrow the same claimant start a new revocation action in the UPC but now for Denmark, and so on? There is no valid reasons to allow this. - The refusal of the stay is completely understandable. None of the parties had asked for a stay prior to the oral argument, and even after the Court explicitly asked the parties’ opinion about a stay, the defendant had not responded positively. During the hearing, the defendant apparently changed its mind. It is clear that the Court (which in the meantime had prepared the case, just like claimant) was not going to grant that request.
- That certain claim language was nowhere to be found in the parent application, as such does not necessarily mean that there is added matter. However, it is clear you are on dangerous ground as you will have to show that a skilled person would be able to derive (the meaning of) that language directly and unambiguously from the whole of the application as filed using this common general knowledge and seen objectively and relative to the date of filing.
- I am surprised that defendants (who should know about the front-loaded character of the UPC proceedings) filed a new set of auxiliary requests too late, apparently without solid reasons for the late filing, and that in the first set, which was allowed, apparently no effort was done to try to overcome the added matter attack which was of course already in the Statement of Defence/Counterclaim for Revocation.
28 May 2025
Local Division Mannheim, MED-EL v Advanced Bionics
Reimbursement of court fees