In brief
- The Milan Central Division of the Unified Patent Court (UPC) has addressed the court's powers to prevent divisional patent strategies from frustrating pending revocation proceedings.
- The court rejected Sandoz's request for a free-standing declaration of obviousness, but dismissed Novo Nordisk's jurisdictional objections to family-specific 'Arrow'-type relief and to an order restraining withdrawal of approval of the patent’s text at the European Patent Office (EPO). The admissibility, merits and scope of these two applications will be assessed at a later date.
- The decision confirms that the UPC possesses an inherent jurisdiction, implicit within its conferred competences under the Unified Patent Court Agreement (UPCA), to prevent procedural strategies - such as abusive use of divisional applications - from depriving its revocation jurisdiction of practical effect, with potentially significant, albeit not automatic, consequences for equivalent divisional claims.
Background
In Sandoz AG v Novo Nordisk A/S (UPC_CFI_2221/2026, procedural order of 22 October 2026), Sandoz sought revocation of Novo Nordisk's European patent with unitary effect, EP 3 689 365 (the “Patent"), principally for lack of inventive step and added matter. The Patent concerns a composition comprising semaglutide for preventing or treating type 2 diabetes, administered parenterally once weekly at a dose of 1.0 mg.
Alongside revocation of the Patent, Sandoz sought three additional forms of relief. Sandoz said these requests targeted the so-called "divisional game”: withdrawing or de-designating patent rights before an adverse ruling, while preserving materially equivalent protection through divisional applications. Sandoz sought:
- a standalone declaration that a specified semaglutide composition, use and administration mode were obvious at the priority date of the Patent, having regard to common general knowledge and/or the prior art relied on (Request 5);
- a declaration that any claim of a unitary or European patent within the court’s competence, entitled to claim the priority date of an application in the Patent’s family and broad enough to cover the subject matter of claims 1 to 5 of the Patent, would lack inventive step (Request 6); and
- an order restraining Novo Nordisk from withdrawing approval of the Patent’s text at the EPO under Article 113(2) of the European Patent Convention (EPC) until a final validity decision by the EPO Opposition Division, a Board of Appeal or the UPC (Request 7).
Sandoz characterised Requests 5 and 6 as seeking Arrow-type relief, intended to establish a defined proposition of obviousness and provide commercial certainty against later enforcement of equivalent claims in a divisional patent. Request 7 was directed at Novo Nordisk, not the EPO.
Novo Nordisk objected to these requests under Rule 19 of the UPC Rules of Procedure (RoP). It argued that the court’s jurisdiction was confined to the heads of competence listed in Article 32(1) UPCA, and that none of these covered Sandoz's additional requests.
The decision
The court upheld Novo Nordisk's objection to Request 5, declaring it manifestly inadmissible in its present form. The request sought an abstract declaration about a composition, rather than a sufficiently identified right or commercial activity. It was not in form an Arrow declaration because it did not identify a specific Sandoz product, process, intended act or market activity. Its breadth also risked affecting unheard third parties.
Requests 6 and 7 however survived Novo Nordisk's preliminary objection, albeit the court reserved determination of their ultimate merits, scope and the conditions for relief:
- For Request 6, the court identified a concrete purpose: preventing the same protective scope as in the Patent from re-emerging through divisionals after withdrawal of the Patent. It treated the request as Arrow-type relief concerning equivalent subject matter within the Patent’s family, provided the relevant patents remained owned by Novo Nordisk and within UPC competence. Crucially, it reserved the admissibility of the request as worded for the main proceedings.
- For Request 7, the court affirmed its power to preserve the effectiveness of pending revocation proceedings by restraining a party from withdrawing approval of the patent's text at the EPO. It did not however issue that restraint as Sandoz' request required more specificity as to the urgency, necessity, proportionality and appropriate scope of any order.
The court reasoned that its inherent authority is implicit in, not additional to, the jurisdiction conferred by the UPCA. It drew on the interpretative approach in XSYS v Esko, the anti-anti-suit injunction in Huawei v Netgear, and Article 42(2) UPCA's requirement that the court ensures its rules, procedures and remedies are used fairly and do not distort competition. The court concluded that it must retain the power necessary to protect proceedings properly before the court and prevent abuse of the divisional applications filing mechanism.
Importantly, the court stated that it is sufficient to observe that the UPC has not treated Art. 32 as preventing measures not literally named in the provision where such measures are necessary to preserve the effectiveness of a head of jurisdiction that is expressly conferred by Art 1, 3 and 32 UPCA.
The court also addressed the interaction between Rule 360 RoP permitting disposal of an action that has become devoid of purpose and that no longer requires adjudication, and a patentee's withdrawal of a patent application's approved text under Art 113(2) EPC. It held that such withdrawal does not automatically extinguish the need to adjudicate, and that where a claimant retains a concrete and continuing interest because the same subject matter is being pursued through a divisional the court may decline to dispose of the action under Rule 360 RoP. Drawing on its earlier decisions in Pari Pharma v Koninklijke Philips and LS9 v bellissa HAAS, the court considered that it could then refuse disposal and determine the merits.
Key takeaways
The order offers useful tools for patent challengers looking to clear the way through a patent family, but its procedural limits are as important as its recognition of jurisdiction.
First, the court has decided it lacked jurisdiction to entertain a claim seeking a declaration that a composition, independent of a patent right, was obvious at a given priority date. Instead, a conventional Arrow declaration should identify the claimant’s product, process or proposed activity. A family-specific request must define the relevant claims and subject matter and address ownership and third-party rights.
Secondly, the UPC has jurisdiction to ensure the effectiveness of the judicial protection entrusted to it. The court has confirmed it has an inherent jurisdiction implicit in its conferred competences, to address abusive use of applications designed to frustrate pending revocation proceedings, including by declining to treat a withdrawn patent as devoid of purpose and proceeding to rule on its validity regardless.
A ruling on the withdrawn patent would not automatically invalidate a later divisional. However, its significance would arise in subsequent enforcement or revocation proceedings, where the court would assess the granted claims, their correspondence with the adjudicated subject matter and any circumvention of the earlier ruling. Different claim scope is not prejudged.
Thirdly, the court has also confirmed its autonomous jurisdiction to grant provisional and protective measures ancillary to a pending revocation action, including restraining a patentee from withdrawing approval of a patent's text at the EPO, although the conditions for granting such relief (urgency proportionality and supporting facts) remain to be assessed case by case.
The court's approach was said to be consistent with the recent order in Omnia v Sidel (UPC_CFI_799/2026; UPC_CoA_90/26) and reinforces that procedural focus. In that case, the court held that the court may entertain an action seeking a declaration of non-infringement even though, at the date on which the action was lodged, the formal grant of the patent had not yet been completed, provided that grant occurs during proceedings and before the defence. That reasoning, based on procedural efficiency, legal certainty and the avoidance of an artificial duplication of proceedings, supports the broader principle that patent-related judicial protection may attach to sufficiently identified subject-matter independently of the formal completion of the grant process.
Finally, divisional filing is not itself misconduct. The court found that the pending family application and Novo Nordisk’s reservation of prosecution rights did not establish abuse at this stage. It also granted leave to appeal the order in its entirety. Pending the Court of Appeal's determination, however, the decision opens a potential route to effective protection against proven procedural frustration.