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.
Interested in more of this? Stay tuned and subscribe here for weekly updates.
On the go, multi-tasking or just prefer to listen? “Willem Hoyng’s UPC Unfiltered AI Podcast” – your weekly, AI-generated podcast discussing Willem Hoyng’s commentary on UPC case law of last week, offers a convenient alternative. Listen on Spotify or Apple Podcasts.
28 July 2025
Local Division Düsseldorf, DDP v Greenchemicals
Withdrawal of PI proceedings
Facts
Claimant filed an application for provisional measures on 7 March 2025.
Parties settled.
Claimant requests withdrawal.
Defendant consents.
Parties do not ask for costs.
Claimant requests the return of 60% of the court fees.
The Court
- Permits withdrawal and orders 60% reimbursement of court fees.
- The hearing of 30 July 2025 is cancelled.
Comment
I do not understand why a party that withdraws an application for preliminary measures gets 60% of the court fee back. It seems clear to me that Rule 370.9 RoP is not written for such applications, but for actions with a written procedure, interim procedure, and oral procedure. 60% is not justified. Settlement took place shortly before the oral hearing. Thus, 20% would have been more than enough. As I have advocated earlier, the whole fee payback system should be abolished (except perhaps in exceptional cases), but it certainly should not be used in such a generous way as in this case.
28 July 2025
Local Division Lisbon, Ericsson v Asustek
No bifurcation
The Court
- No bifurcation.
- Asks the President of the Court of First Instance to appoint a Technical Judge.
- Sets the date for the interim conference on 22 January 2026.
- Sets the date for the oral hearing on 25 March 2026.
Comment
The panel is the same (except for the Technical Judge) panel that, in PI proceedings, held there was no urgency, but provided an obiter dictum that the patent was infringed. The panel’s expectation may have been that, after that obiter dictum, the parties would settle. That was not the case. It will be interesting to see what the decision of that same panel will be, but now with a Technical Judge in the proceedings on the merits.
28 July 2025
Local Division Munich, Papst v Roborock
Extension of term
Facts
In this case, there are three Roborock defendants: a German, a Dutch, and a Chinese entity. These defendants ask for an extension of about a month for R. 19 RoP objections and for the Statement of Defence/Counterclaim for Revocation. If the request is granted, the Chinese entity will agree to appear. Claimant agrees.
The Judge-Rapporteur (JR)
Rules accordingly.
Comment
- This extension does not cause delay and has the advantage that the problem of serving a company locally in China is resolved, and the time limits for all defendants are synchronized. This is all very efficient, and a scheme like this should – in my opinion – be included in the revised Rules.
- In this case, defendants approached the JR by email, who consented the same day. This is an unofficial but efficient way of communicating. However, I remind representatives that you must always copy the representative(s) of the other party (or parties) at the same time. The same is true for telephone conversations with a Judge. You cannot have such a conversation without the other representative present. I refer to R. 8.3 RoP. Judges are also advised not to phone a representative without the other party present. It will be clear that communication in writing (email) is to be preferred, as there cannot be any misunderstanding about the contents of the conversation. I write this because I note that old habits die hard. As in most national jurisdictions, this is a strict rule; the Drafting Committee concluded that such a rule should be written down in the Rules for representatives from jurisdictions that are not familiar with such a rule.
28 July 2025
Central Division Paris, X v Essetre
Claim interpretation
Facts
On 17 May 2024, X started a revocation action to revoke claims 1, 3, 4, 5, 6, 9, and 10 of the patent of Essetre, arguing that these claims lack novelty and are not inventive. On 8 August 2024, the defendant filed a request for amendment and filed an amended claim and five auxiliary requests. In its answer, X invokes lack of clarity (Art. 84 EPC) and non-compliance with Art. 123(2), 54 and 56 EPC.
The Court
- Claim interpretation: The Court applies the principles as stated by the Court of Appeal in UPC_CoA_335/2023 (Nanostring v 10x Genomics).
- The patent is its own lexicon.
- New claims do not lack clarity.
- There is no added matter.
- With respect to novelty, the Court remarks: “It must be borne in mind that for the purpose of the application of Art. 54(1) EPC an invention is considered part of state of the art when it is found clearly integrally, directly and unambiguously in one single piece of prior art and it is identical in its constitutive elements, in the same form, with the same arrangement and the same features.”
- This novelty issue is to be addressed from the vantage point of the notional skilled person, taking into account the skilled person’s common general knowledge at the publication date of the cited document.
- The patent is novel
- With respect to inventive step, the Court states: “In order to assess whether or not a claimed invention is obvious to a person skilled in the art, it is first necessary to determine one or more teachings in the prior art that would have been of interest to a person skilled in the art who, at the priority date of the patent in suit, was seeking to develop an invention or process similar to that disclosed in the prior art. Then, it must be assessed whether it would have been obvious for the skilled person to arrive at the claimed solution of the underlying technical problem on the basis of a realistic disclosure of the selected prior art (see, Munich CD, decision issued on 17 October 2024, UPC_CFI_252/2023; Dusseldorf LD, decision issued on 10 October 2024, UPC_CFI_363/2023).”
- The claims are inventive.
Conclusion
Revocation dismissed.
Comment
- The Court, in my opinion, stated the correct criteria. With respect to novelty I remark that, as with added matter, a claim element can be implicitly disclosed, and I can also imagine that if the document refers for an element of the invention to another document (e.g., with respect to certain materials to be used in a certain structure), that that can be novelty-destroying.
- The Court states that the prior art document should be judged at the date of its publication. I have always had my doubt about this case law. What if the teaching of that prior art document has changed between the publication date and the priority date? In my opinion the teaching at the priority date is decisive. That raises the interesting question if something that before the priority date was not novel/inventive can be novel/inventive at the priority date.
29 July 2025
Local Division Milan, Oerlikon v Bahgat
Rectification
Facts
- On 4 November 2024, the Court gave judgment in infringement proceedings in favor of Oerlikon. It ruled that Oerlikon had to bear 20% of the costs and Bahgat 80%.
- Oerlikon started costs proceedings. In a decision of 9 May 2025, the Court ordered Bahgat to pay € 80,000 as reimbursable costs.
- Oerlikon filed an application on 28 May under R. 353 RoP for correction of the judgment, arguing that the judgment, apart from the € 80,000, also added an additional amount of € 20,000 for the case on the merit and that the Court should have awarded € 100,000.
The Court