REGISTER now: Visser ai webinar - BEYOND THE HYPE: AI IN PATENT PROSECUTION
​

UPC allows intervention by Licensee

​
Darren Smyth
​
May 22, 2024
Additional information
Chevron icon
Info
Tags
UPC
Basic
Infringement
Intervention
Table of contents
Chevron icon
Table of contents
  • Toc Heading
  • Toc Heading

Seoul Viosys Co., Ltd. v. expert klein GmbH, expert e-Commerce GmbH (UPC_CFI_363/2023)

Order of 22 April 2024 (ORD_5343/2024)[1]

Seoul Viosys sued expert klein GmbH and expert e-Commerce GmbH for infringement of EP3926698 at the Düsseldorf Local Division, and expert klein GmbH counterclaimed for invalidity of the patent. The local division decided to hear the infringement action and invalidity counterclaim together.

Seoul Semiconductor Co., Ltd. is a (non-exclusive) licensee under the patent, and filed a request to intervene in the proceedings. This request was supported by the claimant and opposed by the defendants.

The Court noted that Rule 313.1 RoP requires the intervener to have a legal interest in the result of the action before the UPC. It considered that a licensee necessarily has a direct and present interest in the outcome of the invalidity counterclaim, because if the counterclaim is successful, the patent in dispute will be declared invalid retroactively, so the licensee would lose their preferential position compared to non-licensees.

Moreover, the Court considered that the intervention should not be permitted only in respect of the counterclaim. Once the Court has decided to hear the infringement action and invalidity counterclaim together, both will be decided based on a uniform interpretation of the patent. The infringement action and the invalidity counterclaim are therefore closely linked in terms of content. Any change in the claim interpretation directly influences not only the question of infringement, but also the assessment of the validity of the patent. Accordingly, the intervener can only effectively pursue its interest in preventing the invalidity of the patent in dispute if joins the legal dispute as a whole.

The Court therefore declined to decide the legal issue of whether a (non-exclusive) licensee would be entitled to intervene in an infringement action in isolation.

Accordingly the Court allowed the intervention and set a deadline for the intervener to submit a statement in intervention (Rule 315 RoP).

[1] https://www.unified-patent-court.org/en/node/709

Recent Case Reports

See all Case Reports

No language change at Central Division
08 October 2026
Proceedings before the UPC Central Division must be conducted in the language in which the patent was granted. There is no legal basis to change that language. In a revocation action concerning a German-language patent, the Paris Central Division rejected a request to switch the language of proceedings to English, and also rejected a subsidiary request to allow written submissions in English and hold the hearing in English, holding that Article 49(6) UPCA permits no derogation and reflects a deliberate legislative choice.
​
Criteria for obtaining an order to produce evidence under Rule 190
07 October 2026
This appeal judgment clarifies that Rule 190 orders to produce evidence require three cumulative conditions: specificity, necessity and proportionality, and cannot be used for fishing expeditions. The Court of Appeal confirmed that first instance judges enjoy a broad margin of discretion when assessing such requests, and upheld the order requiring production of two fabric samples for ballistic testing. Both the appeal and the cross-appeal were dismissed.
​
Court of Appeal focuses on the technical effect to determine added matter
30 September 2026
The Court of Appeal provided guidance on their approach to assessing added subject matter, highlighting that the technical effect underlying the invention and how the claimed and unclaimed features contribute thereto is central to the analysis.
​