UPC Report Q3|2025

Court of Appeal clarifies managing director liability

The Court of Appeal has clarified the conditions under which managing directors can be made liable for their companies’ patent infringements (decision of 3 October 2025 – UPC_CoA_534/2024 – Belkin v Philips). Contrary to German case law, it found that merely holding the position of managing director is not sufficient to establish liability.

Managing directors could in principle be held liable as accomplices, instigators or accessories for patent infringements committed by their companies (the Court of Appeal had already rejected liability as intermediaries within the meaning of Article 63(1) UPCA assumed by the lower court in its order of 29 October 2024 – UPC_CoA_549/2024; see UPC Report 11/24). A managing director could be held liable if he or she had knowledge of the company’s infringing actions and did not take action to stop them even though it was possible and reasonable to do so. However, this required that the managing director was (i) aware of the circumstances from which the patent infringement arose and (ii) aware of the unlawfulness of the act of use.

Information provided by the patent proprietor was generally not sufficient to establish awareness of unlawfulness if the managing director sought legal advice from a lawyer or patent attorney who concluded that there was no patent infringement. The managing director could rely on the legal advice obtained until a first-instance decision establishing the company’s patent infringement was available.

From the point of view of management and board members, the decision is to be welcomed. In the event of external indications (e.g. warning letter) or internal indications of potential patent infringement, liability can be avoided by obtaining a (positive) expert report from a lawyer or patent attorney. Under the stricter German case law, which the Court of Appeal expressly rejects, that is not generally possible.
 

The UPC’s long-arm jurisdiction over the UK parts of European patents 

Following from the ECJ’s BSH v Electrolux decision of 25 February 2025 (C-339/2022), the Mannheim Local Division has ruled that the UPC not only has jurisdiction to assess the infringement of the UK part of a European patent, but can also assess the validity of the patent incidentally as part of the infringement action (decision of 18 July 2025 – UPC_CFI_359/2023 – FUJIFILM v Kodak). This applied irrespective of whether or not the defendant had brought a revocation action in the United Kingdom, it found. The UPC did not have to stay infringement proceedings or make its decision conditional upon the validity of the patent.

However, the decision about the validity of the UK part of the European patent only had effect between the parties (inter partes); the UPC could not invalidate the validated UK part of a European patent with general effect (erga omnes). The claimant further had no legitimate interest in a separate request for a declaration of infringement, as any determination by the UPC would not have binding effect beyond the infringement proceedings.

The Mannheim Local Division’s ruling is in line with the case law of Düsseldorf Local Division, which had assumed the UPC’s long-arm jurisdiction with regard to the infringement issue in parallel proceedings even before the ECJ’s decision in BSH v Electrolux (Düsseldorf Local Division, decision of 28 January 2025, UPC_CFI_355/2023 – FUJIFILM v Kodak, see also UPC Report 1|2025). However, the validity of the UK part of the patent was not relevant in the parallel proceedings before the Düsseldorf Local Division. The decision conflicts with the case law of the Vienna Local Division, which considered the invalidity defence to be irrelevant in the context of the infringement action as long as no counterclaim for revocation had been filed (decision of 15 January 2025 – UPC_CFI_33/2024 see also UPC Report 1|2025).
 

Jurisdiction of the UPC for infringement of the Spanish part of a European patent by a non-EU-based company  

The Hamburg Local Division has ruled that the UPC has international jurisdiction for the infringement of the Spanish part of a European patent by a company domiciled in a third country outside the EU (in this case: Hong Kong, China) where the company used an authorised representative  within the meaning of the Market Surveillance Regulation based in the EU and who, in the view of the Local Division, is to be regarded as an intermediary (Article 63(1), sentence 2 UPCA) and was sued as an anchor defendant (order of 14 August 2025 – UPC_CFI_471/2023 – Dyson v Dreame et al.).

The Local Division made the following distinction:

(i) As far as the jurisdiction for infringements of a European patent in contracting member states is concerned, the jurisdiction of the UPC arises from a harmful event  as set out in Article 71b, point (2) in conjunction with Article 7, point (2) Brussels I Regulation (recast). The defendant’s place of residence is irrelevant in this regard.

(ii) Insofar as it concerns the infringement of parts of a European patent in non-UPC member states (in this case, Spain), the jurisdiction of the UPC cannot be established in this way. Nor does long-arm jurisdiction in accordance with the ECJ’s BSH v Electrolux decision apply since it refers to the general rule, pursuant to Article 4 Brussels I Regulation (recast), that the courts for the place where the defendant is domiciled have jurisdiction, and this rule cannot be applied to an infringer domiciled in a non-EU country.

In order to establish its jurisdiction nevertheless, the Local Division referred to the regulatory framework of EU law: Pursuant to Article 16(1) of the Product Safety Regulation (EU) 2023/988, (e.g. electronic) products covered by the Regulation may only be placed on the EU market if there is an economic operator established in the EU. If neither the manufacturer nor its importer is established in the EU, the manufacturer must use either an “authorised representative” or “fulfilment service provider” established in the EU (Article 3, point (12) and point 11 of the Market Surveillance Regulation 2019/1020), each of which performs the tasks of the manufacturer.  The local division considered the authorised representative – who was domiciled in Germany and a co-defendant in the specific case – to be an intermediary within the meaning of Article 63(1), sentence 2 UPCA (and a parallel provision of Spanish law).

According to the Local Division, bringing an action against the “authorised representative” as an anchor defendant with respect to infringing acts in Spain also confers, by virtue of the factual connection with the defendant (Article 8(1) Brussels I Regulation (recast)), jurisdiction to the UPC for infringing acts by the non-EU based manufacturer. In practice, this far-reaching decision suggests that, where defendants are based outside the EU, it is advisable to consider whether suing the “authorised representatives” of the defendants – if they have any – may offer tactical advantages. 
 

Non-infringing repair, maintenance, replacement vs patent infringing re-creation  

The Munich Local Division has clarified that the use of a patented product that is subject to exhaustion (Article 29 UPCA) includes the replacement of parts provided that the replacement preserves the identity of the specific patent-protected product placed on the market, as opposed to creating a new product according to the invention (decision of 22 August 2025 – UPC_CFI_248/2024). The distinction between – patent infringing – re-creation of a product and – non-infringing – maintenance, repair and replacement of (wear) parts to restore usability is to be made on the basis of the balancing of the interests worthy of protection of the patent holder in the economic exploitation of the invention on the one hand, taking into account the unique nature of the patented product, and the unhindered use of the specific product according to the invention placed on the market on the other hand. The intended use must include the usual maintenance and restoration of usability if the functionality or performance of the specific product becomes wholly or partially impaired or eliminated due to wear and tear, damage, or other reasons. However, the intended use does not include any measures that result in the re-creation of a patented product. If the replacement of the part in question can normally be expected during the product’s lifetime and if, as a result, the public or customers can reasonably expect to be able to continue using the purchased product or to use it multiple times through the use of the replacement part, it can generally be assumed that the patented product placed on the market is being used in a permissible manner. However, that does not apply in exceptional cases where the technical effects of the invention are reflected precisely in the replaced part. The patent holder’s exclusive right to manufacture is not exhausted when a copy of the patented product is placed on the market for the first time. The approach set out by the Local Division is known from German case law (Federal Court of Justice, decision of 8 November 2023 – X ZR 10/20).
 

Court of Appeal clarifies requirements for preservation of evidence

The Court of Appeal has clarified the requirements for an order to preserve evidence pursuant to Article 60 UPCA, Rule 192 et seq. Rules of Procedure (“RoP”) without having heard the defendant, holding that it does not have to be satisfied with a sufficient degree of certainty that the patent is valid when issuing an order and that the requirements for urgency in the context of preserving evidence are less stringent than in the context of provisional measures (decision of 15 July 2025 – UPC_CoA_2/2025 – Valinea v Tiru):

When considering an application to preserve evidence, the Court may decide, at its discretion, whether to hear the defendant (Rule 194.1 RoP). The Court must take into account the urgency of the preservation of evidence (Rule 194.2(a) RoP) and the probability that evidence will be destroyed or otherwise cease to be available (Rule 194.2(c) and Rule 197 RoP):

• The Court of Appeal found that a distinction must be made between urgency in the context of an application to preserve evidence and the urgency that is required to order provisional measures. This is because, unlike when provisional measures are ordered (cf. Rule 211.4 RoP), the Rules of Procedure do not require the Court to take into account any unreasonable delay when considering an application to preserve evidence. A duration of approximately two months did not diminish the urgency in the specific case.
• It also found that the probability (Rule 194.2(c) RoP) or demonstrable risk (Rule 197.1 RoP) of evidence being destroyed or otherwise ceasing to be available was sufficient; certainty of the loss or the unavailability of evidence was not required. In the specific case, the Court considered the imminent risk of the furnace being put into operation to be a sufficient impediment to the taking of evidence. The Court found it sufficient that the risk of the destruction of technical documentation could not be ruled out if it had not been seized when the furnace was inspected.

Unlike in the case of an order on provisional measures (see Rule 211.2 RoP), the Court did not have to be satisfied with a sufficient degree of certainty that the patent was valid before issuing an order to preserve evidence. It did not have to assess the validity of the patent and the applicant was not required to make any submissions in this regard of its own accord. Given the duty to disclose the facts truthfully and in full, the situation was different if there was a clear challenge to the assumption that the patent was valid, e.g. because the patent had been revoked by a court of first instance or because the applicant knew of prior art that would influence the Court’s decision.
 

Selling individual components constitutes direct patent infringement

The distinction between direct and indirect patent infringement is a crucial one when it comes to offering and supplying components of a patented product, given the often less stringent requirements for enforcing patents against direct infringers. The Mannheim Local Division has now made it clear that offering or supplying all the components of a patented product also amounts to direct patent infringement, i.e. the patent proprietor is not limited to taking action against the complete product (decision of 12 September 2025 – UPC_CFI_338/2024 – Windhager v bellissa HAAS). For this to apply, the design of a patented product according to the invention must – the Mannheim Local Division held – be such that its components can be assembled in a simple manner at the place where the product is used without adding further objects. The individual sale of such a component can therefore also be a direct infringement if the possibility of assembling this together with the other components is pointed out or the assembly is obvious.
 

Court of Appeal spells out requirements for imminent infringement in the case of generics

In the context of the marketing of generic medicines, the mere application for a marketing authorisation by a generics company does not amount to an imminent infringement of IP rights, nor does the grant of such an authorisation create such an infringement. These statements by the Court of Appeal (order of 13 August 2025 – UPC_CoA_446/2025 – Boehringer Ingelheim v Zentiva) are in line with the Lisbon Local Division’s earlier ruling (decision of 8 May 2025 – UPC_CFI_41/2025 – Boehringer Ingelheim v Zentiva). But the Court of Appeal has taken a stricter stance than the Local Division in ruling that further steps required under local law for distribution in addition to the marketing authorisation – in the case at hand, completion of the procedure for pricing and reimbursement as required under the applicable Portuguese law – can give rise to an imminent infringement. The fact that the generics company was already in a position to offer the generic medicine to public hospitals, among others, once this procedure had been completed – more than a year before the expiry of the patent – was sufficient to create an imminent infringement, the Court of Appeal held.
 

Counterclaim: Protection of defendant against insolvent claimant

In its order dated 3 July 2025 (UPC_CFI_149/2024 – Headwater Research v Motorola and others), the Munich Local Division ruled that the claimant in the infringement action must provide security for the costs of the counterclaim for revocation brought by the defendants (Article 69(4) UPCA, Rule 158.1 RoP). The UPCA generally allows the defendant to request security from the claimant for the costs that the claimant may have to bear if it loses the case (Article 69(4) UPCA). The Munich Local Division made it clear that the defendants could require the claimant in the infringement action to provide security in connection with the counterclaim for revocation even though they were themselves claimants in that counterclaim. Otherwise, the defendant could be unreasonably limited in its defence if it were prevented from bringing a counterclaim for revocation because it had no prospect of being reimbursed for the associated costs (see also Court of Appeal, order of 20 June 2025 – UPC_CoA_393/2025 – Emboline v AorticLab).
 

33 auxiliary requests may still be reasonable

The Hamburg Local Division has ruled that 33 auxiliary requests to defend a patent may still be “reasonable in number in the circumstances of the case” as per Rule 30.1c RoP (decision of 10 July 2025 – UPC_CFI_173/2024 and 424/2024 – Nera v Xiaomi). The Hamburg Local Division – like the Mannheim Local Division in its decision of 6 June 2025 (UPC_CFI_471/2023 – DISH v AYLO, see newsletter 06|2025) – did not limit itself to an examination of formal requirements. In this case, the number was considered reasonable because, firstly, a very detailed defence of the patent was mounted based on various feature combinations and specifications, meaning that the auxiliary requests could ultimately be reduced to only two to three essential lines of reasoning. Secondly, the claimant had clearly presented its auxiliary requests in an attached table, making it easier for the court and the opposing party to deal with them.
 

Inadmissible extension by deleting limiting feature in claim

The Hamburg Local Division has taken the view that an inadmissible amendment in the sense of an intermediate generalisation (Article 123(2), (3) EPC) arises if a term that appeared in the version as filed has been omitted from the wording of the claim (decision of 10 July 2025 – UPC_CFI_173/2024 and 424/2024 – Nera v Xiaomi). According to the Local Division, not every deviation from the wording of the original application documents constitutes an inadmissible amendment, but such deviation does constitute an inadmissible amendment when the wording of the claim extends beyond the technical teaching originally disclosed as a result. The Local Division has assumed this to be the case where, for example, a limiting feature in a claim was deleted and there was at least some doubt as to whether the skilled person could have inferred the resulting generalisation from the original disclosure.