Case Reports

Invalidity of juicer patent upheld on appeal

The Court of Appeal upheld the invalidity of Hurom’s juicer patent for lack of inventive step, while clarifying the admissibility requirements for patent amendments and the use of the unamended description when construing amended claims. It also confirmed the UPC’s jurisdiction over infringement in Poland despite Poland not being a UPCA Contracting Member State, but found that Hurom had failed to establish infringement under Polish law.

Evidence preservation doesn’t stretch to interrogation

The Court of Appeal confirmed that evidence-preservation orders may be granted ex parte where there is a demonstrable risk that evidence could be destroyed or become unavailable, and that such orders may extend to relevant commercial and promotional documents. However, Art. 60 UPCA does not permit a bailiff or expert to question the defendant’s personnel on substantive technical matters, which must instead be handled under the Court’s control.

UPC Court of Appeal clarifies claim construction, the role of party experts, and provisional measures in direct-competition cases

The CoA’s decision of 30 April 2025 in Insulet v EOFlow provides important guidance on claim construction, the role of party-appointed experts and the requirements for provisional injunctions.

DNI brought before grant can force UPC opt-in

The Paris CD held that it had jurisdiction over an action for a declaration of non-infringement (DNI) filed before the patents were granted, provided grant occurred before the statement of defense was filed and therefore the patentee's opt-outs filed after the action were ineffective. The Court of Appeal dismissed the appeal but did not adopt that test. It held that the action concerned the patents, not the applications, and so fell within the UPC's competence. Whether a DNI action can be filed before grant is a question of admissibility for the main proceedings, which cannot be raised by preliminary objection. The Court of Appeal agreed that the opt-outs were ineffective because the action had already been brought.

No language change at Central Division

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

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

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.

Court of Appeal affirms interpretation of product-by-process features in claims, and clarifies applicable law pre-June 2023

The Court of Appeal confirmed that product-by-process features in a product claim limit the claim only where the specified process imparts characteristics that can be achieved solely by that process. It also clarified the law applicable to acts occurring before 1 June 2023, holding that UPC law may apply to ongoing infringement for injunctive relief, whereas damages for acts completed before that date are governed by national law, and that claims for provisional protection remain governed by national law.

Appeal reveals tricky deadlines for orders contained in decisions

The Court of Appeal held that where a “privileged order” under Rule 220(1)(c), such as an order relating to the production of evidence under Article 59 UPCA and Rule 190 RoP, is contained within a decision on the merits, a 15 day appeal deadline for that order applies, separate from the substantive appeal deadline. Appeals challenging such orders after that deadline are inadmissible, and parties cannot circumvent the appeal rules by re-filing substantially the same request in the appeal proceedings.

Bringing enforcement proceedings while an appeal is still pending risks liability for defendant’s costs

The Court of Appeal held that setting aside a first-instance decision granting relief subject to recurring penalties generally has retroactive effect. Any penalty fees already paid will be refunded by the Court. The value of proceedings is determined by the interest of the party that brought the action. This is not changed as a result of an appeal. A claimant bringing enforcement proceedings while an appeal is still pending does so at its own risk and may be liable for the defendant’s costs related to the enforcement proceedings.‍

Unsigned Appeal Rejected as Inadmissible

The Court of Appeal held that a statement of appeal that is not electronically signed is not validly lodged under Rule 4.1 RoP, and that this defect cannot be cured after expiry of the non-extendable appeal period. The appeal was therefore rejected as inadmissible, and a late application for re-establishment of rights was itself held to be out of time.

Scripps mRNA reengineering patent found invalid and not infringed by Comirnaty

The Local Division Munich invalidated Promosome's licensed mRNA patent over Scripps' codon-optimisation method, then found BioNTech's Comirnaty vaccine would not have infringed the claims even had they been valid.

Fujifilm v Kodak: clarifying the defence of dependent claims and inventive-step combinations at the UPC

The Court of Appeal gave guidance on defending dependent claims, relying on EPO central limitation during UPC proceedings, and pleading revocation attacks. It also emphasised that inventive-step combinations require a proper pointer to the secondary reference.

Can Reference Numerals Influence Claim Interpretation?

In T 0903/24, the EPO Board of Appeal relied on reference numerals to interpret disputed claim language, rejecting the patentee's narrower reading and revoking novelty over prior art D2 for the main request.

Orders to Produce Evidence at the UPC

GC Aesthetics, Avient, IQIP and Dall Energy: four 2026 UPC rulings reveal how courts weigh proportionality, confidentiality and timing before ordering a party to produce evidence under Rule 190.