Welcome to our latest UPC update. In this edition, we report on recent developments relating to the UPC's long arm jurisdiction, as well as the first substantive decisions made by the Court of Appeal, including one considering the position of director liability.
In our separate article, we discuss the dispute between InterDigital and Amazon over digital streaming patents, and the series of decisions from both the UPC and English Patents Court – with the Mannheim Local Division issuing a without notice anti-interim-licence injunction in favour of InterDigital, and the English Patents Court granting Amazon anti-anti-suit relief.
Latest updates from the court
Much of the news from the UPC in recent weeks has focused on new judicial appointments and enlargement of the court's resources. A third panel of the Court of Appeal will be in operation from January 2026, to meet the steady rise in the court's caseload, and a number of new judges will take up their posts at the same time, including in the Central and Local Divisions in Munich. Meanwhile, the UPC continues to take a break from publishing its monthly statistics, no doubt to allow for the transition of its new Case Management System. The European Patent Office's Unitary Patent dashboard confirms that, as at 7 November, there have been 73,169 requests for unitary effect.
Long arm jurisdiction - Hague Local Division deploys largest reach of the long-arm jurisdiction yet - HL Display v Black Sheep Retail Products, UPC_CFI_386/2024
Applying the CJEU's decision in BSH Hausgeräte v Electrolux (discussed in our previous article), the Hague Local Division (in a decision on the merits) confirmed the long-arm jurisdiction principle in relation to eight UPC contracting member states and six other countries – a UPC signatory member state (Ireland), a non-UPC EU member state (Poland), two Lugano countries (Norway and Switzerland), and two non-EU countries (Lichtenstein and the UK).
The claim was brought by HL Display against Dutch company, BSRP, alleging BSRP had infringed its patent relating to shelf dividers. The Hague Local Division found the patent valid and infringed.
In light of the CJEU's finding in BSH providing that the court of the member state in which the defendant is sued can retain jurisdiction over an infringement claim, even if the defendant challenges validity by way of defence, BSRP confirmed to the court that its counterclaim for revocation only pertained to the UPC contracting member states. For the non-contracting countries, it was a defence.
As BSRP confirmed there were no ongoing revocation claims in the non-contracting EU member states, the Hague Division assumed competence for all the countries designated in the patent, even if they were not UPC contracting member states. BSRP did not dispute this. In respect of Poland (a non-UPC EU member state) and Norway and Switzerland (Lugano countries), the Hague Division had to evaluate whether there was a "serious, non-negligible chance that the competent national court will invalidate the patent" and it held there was no such chance. In respect of Lichtenstein and the UK (the non-EU countries), the Hague Division made an inter partes decision on validity.
Added matter - Court of Appeal finds Seoul Viosys's patent invalid - Seoul Viosys Co., Ltd v expert e-Commerce GmbH and expert klein GmbH - UPC_CoA_764/2024 UPC_CoA_774/2024
In one of its first substantive decisions, the Court of Appeal has invalidated European Patent EP 3 926 698 owned by Seoul Viosys Co., Ltd. for added matter, overturning the decision of the Düsseldorf Local Division. The appeal was brought by expert e-Commerce GmbH and expert klein GmbH following the finding that they had infringed the patent by distributing a smartphone containing an allegedly infringing LED chip.
The Court of Appeal found that the granted claim of the patent covered LED embodiments with a single mesa structure, while the parent application expressly referred only to LEDs with a plurality of mesas. The court rejected Seoul Viosys's argument that certain figures disclosed single-mesa embodiments, finding instead that these figures showed multiple mesas. Accordingly, the patent was invalid for added matter, as the claim as granted contained subject-matter that extended beyond the content of the application as filed.
The Court of Appeal reiterated the applicable approach and principles for claim construction and the assessment of added matter, namely that: (1) the interpretation of a patent claim does not depend solely on the strict, literal meaning of the wording used. Rather, the description and the drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim; and (2) in order to ascertain whether there is added matter, the court must thus first ascertain what the skilled person would derive directly and unambiguously using their common general knowledge and seen objectively and relative to the date of filing, from the whole of the application as filed. This corresponds to the so-called “gold standard” of the EPO ("directly and unambiguously derivable").
As the patent was a divisional patent, the court noted that the subject matter of the granted claim may not extend beyond (1) the disclosure of the application as filed for the patent in suit and (2) the disclosure of the original PCT application that entered the regional phase and which was the parent application for the divisional application.
The Court of Appeal set aside the decision in its entirety, declaring claims 1, 4, 5, 6, and 9 of the patent invalid across Austria, Belgium, Germany, France, Italy, Luxembourg, the Netherlands, and Sweden. It also dismissed all of Seoul Viosys's infringement claims, and ordered it to bear the costs of both sets of proceedings.
UPC Court of Appeal guidance on directors' liability - Koninklijke Philips N.V. v Belkin - UPC_CoA_534/2024 (Appeal Belkin infringement action); UPC_CoA_19/2025 (Belkin appeal, counterclaim for a declaration of invalidity); UPC_CoA_683/2024 (Philips appeal)
In our October 2024 UPC update, we reported on the Munich Local Division's decision in this case. Whilst the court had found that certain managing directors of the defendant, Belkin, were not 'infringers' (and were therefore not liable for damages), they were made subject to the injunction ordered against Belkin by virtue of being 'intermediaries' whose services are being used by a third party to infringe a patent (Article 63 UPCA). The effect was that they could be liable for recurring penalty payments (€100,000 for each day of breach) as a result of any non-compliance with the injunction. 
The Court of Appeal has now considered the case on the merits, including in relation to the position of company directors in respect of infringement committed by their companies – upholding the directors' appeal. It has (unusually) issued a helpful press release summarising the position as follows.
Pursuant to Articles 63 and 25 UPCA, an 'infringer' is someone who does not themselves carry out the infringing acts but to whom the infringing acts of the third party are attributable because they are an "instigator, accomplice or accessory" to the infringing acts. However, merely holding the office of managing director does not make an individual an accomplice or accessory to a company's patent infringement. A director can only be held liable if their contested actions went beyond their typical professional duties as a director outside their remit or usual duties, for example if they deliberately used the company to commit patent infringements, or they knew that the company was committing patent infringement and unreasonably failed to take action to stop this. To be liable, the director must be aware that the company's acts amount to patent infringement. If the director seeks legal advice, they can generally rely upon that advice until a decision of the court on infringement.
On the facts, the directors were not found to be liable.
Court of Appeal guidance on penalties and enforcement - Kodak v Fujifilm - UPC CoA 699/2025
In this decision the Court of Appeal has considered the appropriate interpretation of various Rules of Procedure (RoP) relating to penalties and enforcement.
There are currently multiple proceedings between Fujifilm and Kodak in the UPC, but this decision concerns proceedings in the Mannheim Local Division for infringement of Fujifilm's German part of European Patent 3511174. On 2 April the court found it valid and infringed by Kodak's activities, and ordered that Kodak (a) be restrained from making selling or offering for sale infringing products; (b) pay damages for acts of infringement in Germany; (c) provide Fujifilm with information about past infringements for use in calculating damages; (d) destroy relevant products; and (e) recall relevant products.
Fujifilm sought a penalty for violations of any of the above orders. The court ordered that Kodak should pay a penalty of €50 per square meter for any violations of the injunction in (a) but refused to stipulate a penalty for violation of the other orders. It observed that the amount of the penalty would depend on the character or the violation. It also refused to stipulate deadlines or other modalities for the provision of information, destruction or recall, but noted that the possibility of severe penalties should ensure that Kodak complied.
However, subsequently, Fujifilm was not satisfied with Kodak's efforts to comply with the information, destruction and recall orders, and so it filed an enforcement notice asking the court to issue a warning and impose penalties, followed by an application for the imposition of penalties. The court found that a warning wasn't necessary, as Fujifilm had given Kodak notice of its intention to enforce the orders and Kodak had not complied (or adequately explained why it had not). It ordered Kodak to pay to the court a lump sum penalty of €100,000, a daily penalty of €2,500 between service of its decision and 4 August, and a daily penalty of €10,000 for every day of non-compliance thereafter.
While critical of Kodak's conduct, the Court of Appeal set aside the penalty orders because they lacked legal basis. The Court of Appeal considered that Rules 354.3 and 4 required the court to specify the penalty sum and deadline for compliance in the operative part of the decision on the merits (or subsequent decision) prior to any claim being made under Rule 354.4 for enforcement of the penalty. It was not sufficient for the claimant to simply send an enforcement notice or allege non-compliance with a substantive order.
The court also observed that whilst Rule 118.8 required a translation of orders into the official language of the member state in which enforcement was to take place (to ensure that the enforcing authority (e.g. bailiff) could read the document in their own language), orders involving forfeiture of a penalty did not need to be translated. Given they are enforced by the court that issued the decision, it was sufficient if they were in the language of the proceedings.
Court of Appeal upholds rejection of request for unitary effect – Bodycap & ors v EPO - CoA 796/2025
The Court of Appeal recently dismissed an appeal to annul a decision made by the European Patent Office (EPO) to reject a request for unitary effect based on deficiencies in the request. This case provides a clear example of the strictness surrounding non-extendable deadlines and the Rules of Procedure.
When a European patent is granted, proprietors have one month to file a request for unitary effect, i.e. a request for the grant of a unitary patent based on the European patent. Following grant of their patent, the co-proprietors of the patent in question (Bodycap, CNRS, and Université de Rennes), timely filed a request for unitary effect. However, on 27 January 2025, the EPO issued a notification of irregularities in the request, specifically that the supplied name and address of Université de Rennes differed from those recorded on the European Patent Register. It set a non-extendable one-month deadline to remedy these irregularities in accordance with Rule 7(3) UPR, i.e. by 27 February 2025.
On 3 March 2025, the co-proprietors responded to the notification. The EPO rejected the request for unitary effect on 17 June 2025 on the grounds that the response had been submitted after the expiry of the non-extendable one-month deadline. The co-proprietors therefore filed an application to set aside the EPO's decision via interlocutory review (under certain circumstances an allowable appeal is taken on by the Court of First Instance (i.e. the EPO in this instance) instead of a Board of Appeal). The application also requested, in the alternative, annulment of the decision.
However, the EPO dismissed the application, finding that interlocutory review was not available, and that the set non-extendable one-month deadline had not been complied with. The co-proprietors appealed to the Court of Appeal, arguing (amongst other points) that interlocutory review by the EPO should be possible, that the address was clear enough to identify the joint proprietor, and that their delay only amounted to two working days with no consequences for third parties.
The Court of Appeal held that interlocutory review by the EPO was not available for expedited actions relating to applications to set aside decisions refusing unitary effect. The court noted that Rule 7(3) provides for a non-extendable one-month period to remedy deficiencies, this time limit was expressly excluded from restitutio in integrum (meaning that a European patent proprietor cannot have their rights restored, whatever the reasons for non-compliance), and that the appellants did not dispute they had replied after the deadline despite the EPO's express warning.
The court concluded that compliance with the time limit in Rule 7(3) was mandatory and excluded from restitutio in integrum, thus resulting in dismissal of the appeal.