Case Reports

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.

Replacement parts and the value of asserting a narrower claim combination

The UPC's Düsseldorf Local Division found that Wessper's cartridges indirectly infringed Brita's patent, and that a narrower claim combination can turn a consumable into an essential element.

Late Applications for Provisional Measures Refused for Lack of Urgency

In Ericsson v ASUSTeK, the Milan Local Division refused a provisional measures application filed 21 months into the case, finding continuing infringement and rising losses alone do not establish urgency.

UPC revokes provisional injunction on motorbike helmet intercoms system

The UPC Local Division Milan revoked Cardo's provisional injunction against Reso, ruling its helmet intercom products fall outside the scope of EP4240194, neither literally nor by equivalence.

Preliminary objection on jurisdiction partially successful – UPC clarifies requirements of anchor-defendant jurisdiction for non-UPC territories

The Hamburg Local Division let Nixu pursue US-based Infoblox in the UPC for Germany, France and Finland, but threw out the UK claim. To reach a non-UPC territory through an anchor defendant, a claimant must plead joint infringement there.

UPC applies party-driven equivalence test in absence of Court of Appeal guidance

The Helsinki Local Division found AIM's TV-advertising patent valid but not infringed by TGI, and with no Court of Appeal ruling on equivalence yet, adopted the four-step test both sides put forward, the UPC following the parties' lead.

Prosecution history in claim interpretation at the EPO

In Agathon v Intercom, the UPC's Milan Local Division confirmed that statements made during EPO prosecution are not binding but can offer low-weight guidance on the skilled person's view — here narrowing 'abuts' against the patentee.