
The Unified Patent Court (UPC) has fast established itself as a favourite venue in Europe. Gleiss Lutz’s UPC Report provides a regular overview of the UPC case law that is most significant for the development of the new uniform patent law and procedural law in Europe.
Recent decisions confirm the UPC’s tendency to assume the broadest possible jurisdiction, while the UPC’s German local divisions seem to adopt the SEP holder-friendly bias known from German national courts.
Our January 2025 UPC Report covers the following topics:
- Jurisdiction of the UPC for action for damages following national infringement proceedings
- Jurisdiction of the UPC for infringement of the UK part of a European patent
- SEP/FRAND
- Exhaustion defence
- No invalidity defence without counterclaim
- Revocation action admissible despite standstill agreement
- Preclusion of arguments in revocation actions
- Information to be provided in electronic form only upon request
- Penalty payment for late provision of information
- Penalty payment no longer applies once a preliminary injunction has been lifted
- Motion for definitive removal from channels of commerce
- Publication of decisions
- Security for legal costs from the defendant
Intervener’s liability for costs
Jurisdiction of the UPC for action for damages following national infringement proceedings
The Court of Appeal has ruled that the UPC has jurisdiction for an action for determination of damages due to the infringement of a European patent (Article 32(1), letter (a) UPCA) even if it was a national court of a UPCA Contracting Member State that previously ruled on the existence of the patent infringement and obligation to pay damages, and not the UPC (order of 16 January 2025 – UPC_CoA_30/2024). The Court also found that the UPC’s jurisdiction extends to infringements committed before the entry into force of the UPCA (1 June 2023), as long as the patent invoked had not yet lapsed at that date.
In the case decided, a German court had ruled with final effect – before the UPCA came into force – that the defendant was in principle obliged to pay damages for patent infringement. After the UPCA came into force, the claimant brought its action for the determination of the amount of damages before the UPC and not the German court already seized. The claimant is seeking damages for infringements in Germany, but not in other UPCA Contracting Member States. The Court of Appeal has now referred the matter back to the Hamburg Local Division.
The Court of Appeal’s decision only addresses the question of the UPC’s jurisdiction. It does not answer the question of whether acts committed before the UPCA entered into force are subject to the national patent law that was solely applicable at the time the act was committed, or whether the UPC can apply the UPCA retroactively. In particular, the question is whether the UPC may determine the amount of damages according to the UPCA or must, in this respect too, use the national law that was solely applicable at the time of the established patent infringement. It is also unclear whether the jurisdiction of the UPC would have to be assessed differently if the action for payment had sought damages not only for the infringements established with final effect, but also for those in other UPCA Contracting Member States that were not the subject of prior national infringement proceedings.
Jurisdiction of the UPC for infringement of the UK part of a European patent
The Düsseldorf Local Division has ruled that the UPC also has jurisdiction for actions for the infringement of the UK part of a European patent (decision of 28 January 2025 – UPC_CFI_355/2023). This applies at any rate if the defendant is domiciled in a UPCA Contracting Member State (here: Germany). Since the defendant had filed a counterclaim for revocation in respect of the German part of the patent in suit, but no revocation action in respect of the UK part, the Düsseldorf Local Division did not have to decide whether it would also (still) have had jurisdiction if the defendant had filed a revocation action in respect of the UK part before the competent UK court. The Düsseldorf Local Division declared the German part invalid and dismissed the infringement actions in respect of both the German and UK parts. It found that although the UPC could not declare the UK part invalid, infringement could only be confirmed if the Court was convinced that the patent was valid, which was not the case. It was instead to be assumed that the UK part was invalid for the same reasons as the German part. In situations like this, it was up to the infringement claimant to demonstrate why the competent UK court would issue a different ruling on the validity of the UK part, and it had failed to do so.
SEP/FRAND
The Munich Local Division is placing the responsibility primarily on the implementer in SEP/FRAND cases. Before the court reviews whether the SEP holder’s offer complied with FRAND terms, it is generally necessary to first establish whether the implementer has fulfilled the prerequisites for the UPC to even begin such a review (decision of 18 December 2024 – UPC_CFI_9/2023). The extent to which the SEP holder’s actions are reviewed depended on the information the implementer has shared with the SEP holder and the objections it has raised (prior to litigation). If the SEP holder provided a notice of infringement and an offer to conclude a licence, the implementer is in any event required to disclose information and provide security, even if the SEP holder’s offer does not comply with FRAND terms. The Munich Local Division expressly left open whether the security amount should be based on the SEP holder’s licence offer or the implementer’s counteroffer. The implementer would have to accept that this approach to the FRAND defence may result in the SEP holder’s licence offer not being reviewed at all, it found. The implementer would be free to assert its claim to a FRAND licence by filing either a separate action before the national antitrust courts or a counterclaim before the UPC (see Mannheim Local Division, decision of 22 November 2024 – UPC_CFI_210/2023).
The Munich Local Division also considers it unobjectionable under antitrust law if the SEP holder submits different offers one after the other, or if it submits alternative licence offers – such as a bilateral licence and a pool licence – only one of which complies with FRAND terms or can, in the absence of specific objections from the implementer, be presumed by the UPC to be FRAND-compliant. Licence offers that the SEP holder only submitted after the action was filed appear to be eligible for consideration by the UPC, as well.
The Munich Local Division found that the UPC does not have to consider any special requirements regarding the proportionality of the injunction in SEP/FRAND cases. The principle of proportionality was satisfied by taking into account the procedural framework for balancing the interests of SEP holders and implementers set forth by the ECJ in Huawei v ZTE. It remains to be seen whether the Court of Appeal will confirm the Munich Local Division’s one-sided approach to the FRAND defence with its strong bias against implementers. The emphasis on the counteroffer without any prior review of whether the SEP holder’s licence offer is FRAND-compliant is unlikely to be in line with the requirements set forth by the ECJ (judgment of 16 July 2015 - Huawei v. ZTE).
Exhaustion defence
The Munich Local Division has taken a broad view of the exhaustion defence (Article 29 UPCA), interpreting it to mean that when products are placed on the market with the consent of the patent proprietor, this can exhaust not only product claims protecting the product itself, but also patent claims protecting methods in which the product can be used (decision of 18 December 2024 – UPC_CFI 9/2023). It remains to be seen whether the Court of Appeal will uphold this rather sweeping interpretation of Article 29 UPCA, which can be considered a pragmatic and justifiable stance in SEP/FRAND cases but deviates from the prevailing interpretation that exhaustion does not generally cover method claims.
Also, the Munich Local Division will only take account of the exhaustion defence in infringement proceedings if it covers all contested embodiments. If not all contested embodiments are covered by possible exhaustion, it must be decided on a case-by-case basis whether and to what extent the exhaustion defence should only be considered during enforcement, thus allowing the action to be granted in full despite (partial) exhaustion.
No invalidity defence without counterclaim
According to the Vienna Local Division, the UPC only has to consider the defence of invalidity in infringement proceedings if the defendant has filed a counterclaim for revocation in accordance with Rule 25 et seq. RoP (decision of 15 January 2025 – UPC_CFI_33/2024). Otherwise, this defence is irrelevant.
Revocation action admissible despite standstill agreement
If the patent proprietor agrees with a third party that an action for revocation may only be brought after giving prior notice and once a defined period has expired, an action brought in breach of this agreement may nevertheless be admissible. The Paris Central Division found that the claimant’s constitutionally guaranteed access to effective judicial protection could only be restricted based on an overriding public interest, and not by a standstill agreement serving only the individual interests of the patent proprietor (decision of 18 December 2024 – UPC_CFI_454/2023). It has therefore confirmed its previous ruling that a standstill agreement does not preclude the filing of a revocation action (order of 10 May 2024 – UPC_CFI_454/2023). The patent proprietor can therefore only assert claims for breach of contract, and would be well-advised to include a contractual penalty in the standstill agreement.
Preclusion of arguments in revocation actions
In two decisions, the Paris Central Division has further specified the preclusion rules it has developed for revocation actions. On the one hand, the starting point continues to be that all the legal and factual arguments and related evidence must be presented with the revocation action and that, in principle, subsequent submissions will be limited to a response to the patent proprietor’s reply (see UPC Report 12|24). On the other hand, however, the Division found that, taking into account principles of procedural efficiency and proportionality, the preclusion rules must not be applied in an overly strict way (decision of 21 January 2025 – UPC_CFI_311/2023). Claimants in revocation actions should not have to present facts and evidence as a precautionary measure in cases in which the patent proprietor is not expected to dispute such facts and evidence. In addition, the Division found that the right to fair proceedings in borderline cases in which there is no clear distinction between a response to the patent proprietor’s submissions and new arguments by the claimant requires a generous application of the preclusion rules in favour of admitting the claimant’s submissions (decision of 17 January 2025 – UPC_CFI_316/2023).
Information to be provided in electronic form only upon request
The Munich Local Division is of the opinion that a patent infringer only has to provide information on infringements (Article 67 UPCA) in electronic form if the claimant has specifically requested this and the court has issued a corresponding order (order of 17 December 2024 – UPC_CFI_390/2023). If the infringer is ordered to provide information and the operative part of the judgment does not specify a particular form in which the information must be provided, the patent infringer can decide whether to provide the information in electronic or paper form. Claimants should generally request that information be provided in electronic (better yet: machine-parsable) form so that the defendant cannot merely provide the information in paper form (the evaluation of which, depending on its scope, can be significantly more time-consuming than machine-parsable information).
Penalty payment for late provision of information
According to the Munich Local Division, a penalty payment imposed by the UPC (Article 82(4) UPCA, Rule 354 RoP) to enforce the provision of information (Article 67 UPCA) should not only have a coercive function, but also a punitive function. The penalty must therefore be paid even if the obligor has duly provided the information, but not until after the deadline set in the judgment (but before the court’s decision on the penalty payment), the Munich local divison found (order of 17 December 2024 – UPC_CFI_390/2023). It remains to be seen whether the Court of Appeal will uphold the Munich Local Division’s view. This seems unlikely given that, in contrast to penalty payments for the purpose of enforcing an injunction, penalty payments in the context of enforcing the obligation to provide information do not have a punitive function – at least not from the point of view of German civil law. In German enforcement proceedings, the party obliged to provide information can avoid having a penalty payment imposed on it for failure to provide information or for failure to duly provide information (section 888 Code of Civil Procedure (Zivilprozessordnung, “ZPO”)) by duly providing information by the time the penalty payment proceedings have been finally decided. The discrepancy between UPC enforcement and national enforcement resulting from the ruling of the Munich Local Division is hardly compatible with Article 82(3), sentence 2 UPCA, according to which decisions of the Court are enforced under the same conditions as decisions issued in the Contracting Member State in which enforcement takes place. The German legislature has also made it possible to use national enforcement proceedings to enforce orders for information issued by the UPC (see Article II, section 19(3) Act on International Patent Treaties (Gesetz über internationale Patentübereinkommen, “IntPatÜG”), which refers to section 888 ZPO). However, the meaning of the “without prejudice” proviso in Article 82(3), sentence 1 UPCA is still in need of clarification by the Court of Appeal.
Penalty payment no longer applies once a preliminary injunction has been lifted
The Court of Appeal has ruled that a penalty payment imposed for a breach of a preliminary injunction (Article 63(2) UPCA, Rule 354.4, sentence 3 RoP) must be waived if the preliminary injunction including the threat of a penalty payment (Rule 354.3 RoP), has been lifted (order of 10 December 2024 – UPC_CoA_470/2023). The Court of Appeal held that the lifting of the injunction eliminates the basis for ordering the penalty payment – at least if the injunction is lifted retroactively, which it usually is. The obligor will then have a claim to the repayment of the penalty payment that it has already made. In the case decided, the Munich Local Division had issued a preliminary injunction with the threat of a penalty payment. The defendant breached this injunction, so the Local Division imposed a penalty payment. The Court of Appeal later lifted the injunction, including the threat of a penalty payment.
Motion for definitive removal from channels of commerce
According to the Vienna Local Division, the remedy of definitive removal of products from channels of commerce (Article 64(2), letter (d) UPCA is a different remedy to recall (Article 64(2), letter (b) UPCA) and only comes into consideration if the infringer has both the actual and legal means to give effect to it (decision of 15 January 2025 – UPC_CFI_33/2024). Requests for definitive removal must therefore focus on concrete and sufficiently specific measures which the defendant is able to take by law and in point of fact (see also the Düsseldorf Local Division, decision of 3 July 2024 – UPC_CFI_7/2023).
Publication of decisions
The Vienna Local Division has upheld the view that the publication of a patent infringement decision in public media will only be considered in cases where the other remedies ordered by the UPC do not already protect the claimant (decision of 15 January 2025 – UPC_CFI_33/2024). In exercising its discretion, the UPC must consider the aims of Article 80 UPCA, namely to deter future infringers and increase public awareness. The claimant must show why its interest in such measure is substantiated in the specific case and also why the remedies ordered by the UPC are inadequate and its interest in publication outweighs the defendant’s opposing interest (see also UPC Report 12|24).
Security for legal costs from the defendant
The Düsseldorf Local Division has confirmed its case law that a defendant may be ordered to provide security for the claimant’s legal costs, Rule 158 RoP (order of 3 December 2024 – UPC_CFI_140/2024). The Local Division considered there to be no conflict with Article 69(4) UPCA, which is restricted to security provided by the claimant for the defendant’s legal costs. However, it considered security provided by the defendant to be subject to stricter requirements than security provided by the claimant because the claimant makes a voluntary decision to litigate. Special consideration must also be given to the defendant’s right to fair proceedings and to ensuring that the order for security for costs does not prevent the defendant from presenting its case effectively before the Court, it said.
Intervener’s liability for costs
According to the Vienna Local Division, an intervener for the unsuccessful party must pay its own costs and also those of the successful party, at least to the extent that its procedural behaviour increases the costs for them (decision of 15 January 2025 – UPC_CFI_33/2024). The RoP have no specific provisions on the costs to be borne by interveners. The Vienna Local Division’s decision in this regard is based on Rule 315(4) RoP, which states that an intervener shall be treated as a party.
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