UPC Report 06|25

Moving towards a uniform doctrine of equivalents for the UPC

According to the Mannheim Local Division, the UPC needs to develop its own doctrine of equivalents – to which end it could standardise the doctrines of equivalents or equivalence tests applied in the UPCA Member States (decision of 6 June 2025 – UPC CFI 471/2023 – DISH v AYLO). As the Mannheim Local Division sees it, according to all the doctrines of equivalents or equivalence tests applied by the UPCA Contracting Member States, there is no infringement by equivalence if the substitute means is not technically and functionally equivalent in the sense that the modified means do not fulfil essentially the same function in order to achieve essentially the same effect (“technical-functional equivalence”), see Brussels Local Division, decision of 17 January 2025 – UPC_CFI 376/2023 – OrthoApnea/Vivisol).

This requirement was not met in the case before the Local Division, meaning that the Local Division did not have to rule on what further assessment steps would be required under a uniform UPC doctrine of equivalents.

The Mannheim Local Division is thereby distancing itself from the approach followed by the Hague Local Division, which adopted a test for infringement by equivalence taken from the Dutch patent law doctrine (see The Hague Local Division, order of 22 November 2024 – UPC_CFI_239/2023 – Plant-e v Arkyne, see also UPC Report 12|24). As long as the UPC Court of Appeal has not developed a uniform doctrine of equivalents, parties can use the leeway provided by the differing doctrines of equivalents of the UPCA Member States.

Clarification from Court of Appeal regarding communication of information

The Court of Appeal has provided clarification regarding the communication of information under Article 67(1) UPCA and confirmed the Munich Local Division’s view that a penalty payment also has a punitive nature (order of 30 May 2025 – UPC_CoA_845/2024 – Belkin v Philips). Given the risk of incurring a penalty in the course of UPC enforcement, it is strongly recommended that parties obliged to provide information immediately assign a sufficiently large number of employees to prepare the submission of information (at the latest) upon receipt of the notification of the intention to enforce the decision concerned. The following should also be noted:

• An order to communicate information must specify the time period for providing the information; this time period should be included in the request for the order. If no time period is set, it is up to the party that requested the order to communicate information to specify a reasonable time period. The length of this period depends on the circumstances of the individual case (in particular the scope of the information, the period of time for which the information is to be provided and the resources of the party required to provide the information). The UPC Court of Appeal considered that 14 calendar days was too short a period to provide information covering around eight years and that a period of six to eight weeks would be reasonable.
• If the order to communicate information does not indicate the form in which the information is to be provided, the party required to communicate the information is generally free to choose whether to provide the information on paper or in electronic form.
• If information is to be provided on the “price obtained for the infringing products” pursuant to Article 67(1), letter (b) UPCA, both the manufacturer or purchase prices and the sales prices must be communicated as a rule.
• A penalty payment based on failure to communicate information or to communicate it within the set period may also be imposed even if the information has since been provided. Penalty payments serve not only a coercive but also a punitive function, the Court held. A penalty payment can, however, only be imposed if it can be established that the party required to communicate the information was at fault, with such party bearing the burden of proof that it was not reasonable and/or possible to properly comply with the order within the set time period.
• This party also bears the burden of presentation and proof for the assertion that the obligation to communicate information has been (completely) fulfilled.

The Court of Appeal’s conclusion that penalty payments are punitive in nature leads to a discrepancy between UPC enforcement and national enforcement that is hard to reconcile with Article 82(3), sentence 2 UPCA (see UPC Report 01|25 on the Munich Local Division’s decision (Munich Local Division, order of 17 December 2024 – UPC_CFI_390/2023 – Philips v Belkin). The Court of Appeal did not address this, however.

No payment of security for legal costs by defendant in infringement action and claimant in counterclaim for revocation

The Court of Appeal has made it clear that a defendant in an infringement action does not have to provide security for legal costs (Article 69(4) UPCA) in favour of the claimant in such action (order of 20 June 2025 – UPC_CoA_393/2025 – AorticLab v Emboline). The Court noted that Article 69(4) UPCA is aimed at protecting a defendant against a claimant that initiates an action without having sufficient means to compensate the defendant if the claimant loses the case. This rationale does not apply to a defendant that is merely defending itself. The Court of Appeal has therefore rejected the decisions handed down by the Munich Local Division (order of 16 April 2025 – UPC_CFI_628/2024 – Emboline v AorticLab) and Düsseldorf Local Division (order of 3 December 2024 – UPC_CFI_140/2024 – 10x Genomics v Curio Bioscience, see UPC Report 01|25), which had taken the opposing view.

The Court of Appeal also makes it clear that a defendant does not have to provide security for legal costs pursuant to Article 69(4) UPCA/Rule 158 RoP if, in response to the infringement action, it brings a counterclaim for revocation and thus becomes a claimant itself. According to the Court, although the wording of Article 69(4) UPCA indicates that it could be possible to order security for legal costs in such a case, the obligation to pay security for costs would disproportionately hinder the defendant in the infringement action and claimant in the counterclaim for revocation in its defence, since asserting a counterclaim for revocation is the only way of raising invalidity arguments with respect to the patent in suit. In contrast, the claimant in a national action for revocation filed before the Federal Patent Court can be required to pay security for legal costs if the prerequisites laid down in section 110 Code of Civil Procedure (Zivilprozessordnung) are met.

Jurisdiction in cases involving multiple defendants even where commercial relationship is only “indirect”

According to Article 33(1), letter (b) UPCA, an action may be brought against multiple defendants before the same local or regional division of the UPC if one of the defendants (the so-called anchor defendant) has its principal place of business in the jurisdiction of the local or regional division in question. The defendants must have a commercial relationship, however. The Munich Local Division has now ruled that an “indirect commercial relationship” is sufficient (order of 20 June 2025 – UPC_CFI_127/2024 – Headwater v Flextronics). In the case at hand, the UPC confirmed the existence of a commercial relationship between the domestic anchor defendant A and its foreign group companies B and C on the basis of their group affiliation, as well as an additional commercial relationship solely between the foreign group company B and another company D, which had no direct commercial relationship with the anchor defendant A. According to the Court, it is sufficient if there is a commercial relationship with other companies in the group to which the anchor defendant belongs. The UPC refers to this as an “indirect” commercial relationship.

The Munich Local Division’s decision once again confirms the UPC’s tendency to interpret the jurisdictional rules broadly. It remains to be seen, however, whether the Court of Appeal will agree with what is a very liberal interpretation. The wording of Article 33(1), letter (b) UPCA would appear to indicate that all the defendants must be part of the same commercial relationship.

24 auxiliary requests may still be reasonable

The Mannheim Local Division has found that the requirement of Rule 30.1c RoP – namely that auxiliary requests in defence of a patent must be “reasonable in number in the circumstances of the case” – is not to be assessed purely in formal terms (decision of 6 June 2025 – UPC_CFI_471/2023 – DISH v AYLO). The Local Division held that it was the grounds for the auxiliary requests that had to be taken into account when assessing whether the number of requests was reasonable. If the auxiliary requests – reasonable in number in each case – served to defend against different attacks on the patentability of the patent in suit, having as many as 24 of them could still be reasonable. The decision is to be welcomed and highlights the importance of carefully substantiating auxiliary requests and linking them to the different nullity arguments.

Court of Appeal confirms jurisdiction for acts of use prior to the UPCA’s entry into force

The Court of Appeal has ruled that the UPC’s jurisdiction also covers acts of use that occurred before the UPCA entered into force and before the withdrawal of an effective opt-out (order of 2 June 2025 – UPC_CoA_156/2025 – Esko v XSYS; see also the order of the Munich Local Division dated 10 February 2025 – UPC_CFI_342/2024 – PHOENIX CONTACT v ILME, UPC Report 02|25). Since the decision concerned an objection, the Court of Appeal deliberately did not address the issue of which substantive law applies to acts committed before the UPCA entered into force – an issue that the Mannheim Local Division already dealt with by drawing a distinction between infringing acts completed before the UPCA entered into force (in which case: substantive national law) and those that were ongoing after the UPCA entered into force (in which case: in principle substantive law as laid down in the UPCA) (order of 11 March 2025 – UPC_CFI_162/2024 – Hurom v NUC Electronics, see UPC Report 03|25). It remains to be seen whether the Court of Appeal will follow this approach.