Our September 2025 UPC update covers significant developments including the court's transition to a new Case Management System and renewed discussions about Ireland's potential referendum on UPC ratification. Key judicial decisions include the Court of Appeal's important ruling in Boehringer v Zentiva defining the boundaries for "imminent infringement" in generic medicines cases, the Hamburg Local Division's grant of a preliminary injunction in Dyson v Dreame extending coverage to non-UPC member Spain, and the Hamburg court's narrower interpretation of patent descriptions in Agfa v Gucci compared to the EPO's G1/24 decision. We also report on clarifications on evidence preservation orders (saisie), and some important rulings on security for costs applications, and confidentiality.
Latest updates from the court
The UPC has been taking a break from publishing its monthly statistics to allow for the transition to its new Case Management System (due to be fully implemented on 23 September) but, as at 30 June 2025, the caseload number stood at 946 cases. Meanwhile, the European Patent Office's Unitary Patent dashboard confirms that, as at 15 September 2025, there have been 67,789 requests for unitary effect leading to 67,179 registered Unitary Patents.
Generally, there have been renewed reports about the possible timing of a referendum in Ireland to consider whether it should ratify the UPC Agreement. A 'yes' vote would mark a significant development, particularly given Ireland's position as a common law, English-speaking jurisdiction. Meanwhile, the Patent Mediation and Arbitration Centre has started the process of considering applications for its list of mediators, arbitrators and experts.
Preliminary injunctions: Court of Appeal sets boundaries of imminent infringement in the context of generic medicines - Boehringer Ingelheim International GmbH v Zentiva Portugal LDA – UPC_CoA_446/2025 and UPC_CoA_520/2025
The Court of Appeal has issued an important decision relating to the marketing of generic medicines and the circumstances in which the court will find that there is an imminent infringement, such that a preliminary injunction should be awarded.
Boehringer owns European Patent 1 839 843, claims 1 and 2 of which are second medical use claims relating to the use of nintedanib. Whilst the patent had initially been opted out of the UPC's jurisdiction, Boehringer later withdrew the opt-out and began infringement proceedings in the Lisbon Local Division against generic pharmaceutical company, Zentiva, relating to its actions with nintedanib generics on the Portuguese market. Specifically, in August 2024, Zentiva had obtained two marketing authorisations from the Portuguese regulatory authority, INFARMED, for generic medicines comprising nintedanib as active ingredient. Such an authorisation permits selling to private hospitals in Portugal but, to supply medicines to public hospitals, and obtain reimbursement, it is necessary to request a Prior Evaluation Procedure (PEP), which establishes the conditions under which the medicines can be acquired by relevant public entities. In Portugal, it is customary for generic companies to request a PEP before a patent expires, and Zentiva had done so (more than a year before the patent was due to expire), with the application granted in December 2024.
The Lisbon Local Division had denied Boehringer's application for provisional measures against Zentiva, on the basis there was no risk of imminent infringement. The Court of Appeal has now overturned that decision. The court concluded that, on the balance of probabilities, it was more likely than not that patent infringement was imminent, through Zentiva 'setting the stage' for offering the generic medicine in Portugal. The court made the following points:
- In the context of marketing of generics, a mere application for a marketing authorisation (or grant of one) does not amount to an imminent infringement.
- However, completion of national procedures for health technology assessment, pricing and reimbursement for a generic medicine can amount to an imminent infringement. This assessment must be made by reference to the national regulatory and legislative context, and considering the circumstances of the case.
- Zentiva's PEP application was made more than a year ahead of patent expiry. Whilst it was customary for generics companies in Portugal to apply for a PEP before a patent had expired, Zentiva had concluded this procedure prematurely.
- Whether a premature PEP application can constitute imminent infringement was tied to the question of what Zentiva could do on the Portuguese market in that one-year period before the patent was due to expire. The court concluded that it was more likely than not that the PEP approval from the Portuguese authority meant that Zentiva could offer the generics to public hospitals in Portugal without any further administrative steps. It was only self-restraint by Zentiva that would prevent it from taking part in public procurement exercises etc.
- The court concluded that Zentiva had not offered "any credible explanation" as to why it would be useful for it to obtain the PEP more than one year before the patent expired.
- The court went on to find that the necessity requirement was also met as two competing products could lead to both price pressure and permanent price erosion.
Preliminary injunctions: Hamburg Local Division grants preliminary injunction to cover Spain – Dyson Technology Limited v Dreame International (Hong Kong) Limited & ors - UPC CFI 387/2025
The Hamburg Local Division has granted a preliminary injunction against four defendants in the Dreame Group of companies, restraining infringement of a Dyson patent for a hair curler (European Patent 3 119 235) in contracting member states of the UPC Agreement (UPCA) and Spain (which is not a signatory of the UPCA). The first defendant is a Hong Kong company which sold devices via company specific web sites, including for Germany and Spain. The second and third defendants are German companies. The fourth defendant is a Swedish company.
In relation to acts of infringement in UPCA member state, the court determined it had jurisdiction over the first defendant under the combination of Art. 7(2) and 71b(2) of the Recast Brussels Regulation, over the second and third defendants under Art. 4(1), and over the fourth defendant under Art. 8(1).
Regarding Spain, the applicant had not made any plausible allegation that the first or fourth defendants had infringed or threatened to infringe the Spanish patent. However, notably, the third defendant had been nominated as the group's "Authorised Representative" for the purpose of compliance with EU regulations for product safety for electrical appliances, including declaring that the products conformed with the regulations. This role was indispensable for the distribution of the group's products in the EU, making the third defendant a proper party to a claim for an injunction in all EU countries. Accordingly, the third defendant was an appropriate anchor defendant for proceedings in Germany claiming injunctive relief in Spain.
In light of this, the court considered its competence to hear claims against the first defendant for acts of infringement in Spain pursuant to Art.33(1)(b) of the UPCA, which provides inter alia that the local division of a contracting member state has competence over an action against a defendant domiciled in that state and multiple other defendants, regardless of their respective domicile or principal place of business, "only where the defendants have a commercial relationship and where the action relates to the same alleged infringement".
The court considered that the requirement of a "commercial relationship", and therefore the link between the defendants, should not be interpreted too narrowly. Consequently, installing an authorised representative in a certain EU member state "likely subjugates a non-EU manufacturer under the jurisdiction of the UPC in that Member State, including with respect to the national parts of the patent in suit in non-UPCA or third countries". The court concluded this was not an unfair outcome, as the rationale of having an authorised representative was to have distribution channels under effective control of relevant authorities by having a representative that had to report to them.
Claim interpretation: Hamburg Local Division takes narrower view on interpretation of description definitions in interpreting claims than the EPO's decision in G1/24 – Agfa NV v Guccio Gucci S.p.A. & ors - UPC_CFI_278/2023
In one of the first UPC cases in the fashion sector, the Hamburg Local Division has considered how the description in a patent should be used in interpreting its claims. The case relates to Agfa's patent (European Patent 3 388 490) for a method for decorating natural leather with a decorative image which, it alleged, had been infringed by various companies in the Kering group, including Gucci. The defendants counterclaimed for revocation. The court concluded that Agfa's patent was valid but not infringed.
Of particular interest is the court's approach to interpretation of the description which was narrower than the recent EPO Board of Appeal decision in G1/24. In that case, the Board of Appeal held that the description is always referred to when interpreting claims and not just in the case of unclarity or ambiguity. Here, however, the court stated that description definitions which were inconsistent with the claims could be ignored and that a patent may be used as "its own lexicon" but strictly where the description relates to the feature in question. If there are specifications in the description that are inconsistent with the claims, they cannot be used to support a broad claim interpretation. The Local Division decided that Agfa's patent was valid but not infringed.
Claim 1 of the patent claimed that a pigment providing an achromatic colour different from black would be applied as a base coat on leather and then a colour image would be inkjet printed on top. The patent defined an 'achromatic colour' as one that does not have any dominant hue, i.e. white, grey or black (albeit black is explicitly excluded from the claims). The court held that 'ivory' - which was used in Gucci's base colour - was not within the scope of the claim. This was because the patent's definition of achromatic - to "have no dominant hue, meaning that all wavelengths are present in approximately equal amounts within those colours" - made clear that not all whitish colours were within that scope. The skilled person would understand the teaching to be that the colour of the base coat cannot reach the point of having a dominant hue, e.g. ivory, because not all wavelengths would be present in approximately equal amounts in such a hue.
Whilst part of the description described an embodiment with achromatic and chromatic pigments in the base coat to provide an off-white or pale clay colour, the court held it could "no longer be considered being part of granted claim 1" (and the same applied to another example in the description with a base coat of pale yellow) because achromatic and chromatic colours are mutually exclusive and "a colour only similar to achromatic is not achromatic". It held that the examples in the description "could not (and [do] not) override the clear definition given in [an earlier paragraph in the description] due to the necessity of legal certainty" and therefore a number of parts of the description should have been deleted.
Added matter: Düsseldorf Local Division finds Headwater's patent invalid in global wireless patent dispute with Samsung – Headwater Research LLC v Samsung Electronics GmbH & ors - UPC_CFI_26/2024
In 2024, Texas-based Headwater Research LLC initiated a global patent enforcement campaign against Samsung over the alleged infringement of several wireless patents, filing disputes in both the Eastern District of Texas and the UPC. The decision of the Düsseldorf Local Division related to Headwater's European Patent 3 110 069, and the Data Saver functionality of Samsung's Android 7 ("Android Nougat") or higher operating systems. Claim 1 of EP 3 110 069, and the Data Saver functionality, relate to selectively deactivating the data usage of apps if the app is running in a background state (rather than a foreground state).
The court rejected the infringement action and revoked the patent, finding that Samsung's revocation counterclaim based on added matter was well-founded. In doing so, the court further confirmed established UPC (European) principles that added subject-matter must be assessed by considering what the skilled person would derive directly and unambiguously using their common general knowledge, seen objectively and at the date of filing, from the whole of the application as filed.
In short, the court agreed with Samsung that certain features of claim 1 were not disclosed in the application as originally filed because, according to the earlier application, the processor determines whether a network service usage activity is running in the background/foreground, instead of whether a (first) app is running in the background/foreground, and then categorises and prioritises application traffic (rather than selectively blocking/allowing).
The following day, the Munich Local Division revoked Headwater's European Patent 2 391 947 (in part, to the extent of claims 1, 2, 5, 6, 10 and 35 with effect in Germany and France), also on the grounds of added matter. The subject matter of the invention disclosed in the original application was directed to a "verifiable device-assisted service policy implementation" (as titled) in a wireless network. The court found that, according to the originally filed application, it was an integral and indispensable part of the invention that the implementation of a service policy was verifiable, and the omission of this feature from claim 1 therefore added matter. In addition to the impermissible extension of subject matter by omitting the verifiable (implementation of the) service policy from the subject matter as originally disclosed, the court also found that claim 1 added matter because the specific combination of features claimed was not directly and unambiguously disclosed in the application as filed.
Orders to preserve evidence (saisie)
Orders to preserve evidence and inspect premises are provided by Article 60 of the UPCA. Such an order can be made on an ex parte basis, and even before proceedings begin, if the applicant presents reasonably available evidence to support the claim that the patent has been infringed or is about to be infringed (subject to the protection of confidential information). An order can allow the potential claimant to get a detailed description of infringing products, with or without taking samples, seizure of products or, where appropriate, seizure of materials and implements used in producing or distributing those products, as well as related documents. The court can also order inspection of the potential defendant’s premises.
The order should only be made ex parte where delay is likely to cause irreparable harm to the patent owner, or where there is a demonstrable risk of evidence being destroyed.
Valinea Energie SASU v TIRU SAS – UPC CoA 002/2025
In this Court of Appeal decision, Valinea appealed against an order issued by the Paris Local Division dismissing its request to revoke ex parte measures for preserving evidence and inspecting premises.
The case arose from applications by Tiru for evidence preservation measures against two companies (Valinea and Maguin) in relation to an allegedly infringing waste incineration furnace. The Paris Local Division had authorised Tiru to preserve evidence relating to the allegedly infringing furnace and to conduct simultaneous on-site inspections at both companies' premises, along with several additional measures. The orders were executed in January 2025 and, in February 2025, Valinea sought to revoke the granted orders.
This application was dismissed and Valinea appealed. Its main arguments on appeal were that the ex parte nature of the measures was unjustified due to there being no proven risk of evidence destruction, that Tiru had breached its duty of candour by failing to disclose key prior art, and that Tiru's delay in filing the application undermined any claim of urgency.
In rejecting the appeal, the Court of Appeal established important clarifications for such orders including:
- When examining an application for preserving evidence, the court exercises its discretion by taking into account the urgency of the action. In this case, the court made proper use of its discretion in view of the specific facts of the case, and duly justified its decision to depart from the principle of inter partes proceedings.
- The risk of destruction or unavailability of evidence, as a criterion for assessing the merits of ex parte measures, concerns both access to the allegedly infringing article and the associated technical documentation. The assessment of the risk must be based on the probability or the demonstrable risk of evidence being destroyed, and not on the certainty of its disappearance or unavailability.
- When examining an application for preserving evidence and inspection of premises, the Court is not required to assess the validity of the patent at issue. This issue sits solely within the competence of the court ruling on the merits or on provisional measures, unless validity is clearly questionable (e.g. following a decision of an Opposition Division or a Board of Appeal of the European Patent Office in a parallel opposition procedure, or in revocation proceedings before another court in respect of the same patent).
Centripetal Limited v Palo Alto Networks, Inc. – UPC CFI 636/2025
In this decision of the Mannheim Local Division, Centripetal Limited sought penalty orders against Palo Alto Networks for alleged non-compliance with an evidence preservation order that required monitoring of Palo Alto's network security system at its Munich premises.
Centripetal had tried to execute a Court of Appeal-modified saisie order on 11 July 2025, but encountered difficulties when the only salesperson present at the Munich office lacked access to the relevant technical systems, with Palo Alto's counsel refusing to arrange increased access rights from the US headquarters. Centripetal requested that Palo Alto be held in contempt of the saisie order, with substantial daily penalties starting at €50,000 and escalating to €1,000,000, arguing that Palo Alto had blatantly refused to provide the court expert with the requested system access.
The court rejected Centripetal's penalty request, finding that Palo Alto was not in breach of the saisie order because inspection was limited to what was actually present at the specified premises during ordinary business operations. The court clarified that saisie orders do not require defendants to actively set up systems or increase employee access rights beyond what is necessary for normal daily business activities, and that defendants have only a passive obligation to tolerate inspection rather than an active duty to procure items not located at the premises.
The court noted that Centripetal had fundamentally misunderstood the nature of Palo Alto's Munich office, which belonged to a separate German sales entity rather than being a branch of the US parent company, and that requiring access rights to be increased from the US headquarters would exceed the scope of the preservation order. Consequently, the court found no non-compliance and ordered Centripetal to bear the costs of the enforcement proceedings.
Security for costs: Court of Appeal confirms failure to pay can lead to a decision by default - Microsoft Corporation v Suinno Mobile & Ai Technologies Licensing Oy - UPC_COA_363/2025
In this decision, the Court of Appeal has provided important clarification on the application of the rules governing decisions by default, particularly distinguishing between decisions by default against claimants vs defendants.
Following a claim for infringement brought by Suinno in the Paris Central Division, Microsoft filed a request for security for costs pursuant to Rule 158 of the Rules of Procedure. The Central Division ordered Suinno to provide €300,000 in security, and informed it that failure to provide security within the specified timeframe could result in a decision by default. Suinno failed to pay the sum ordered and, instead, appealed on quantum. The Court of Appeal dismissed this appeal and, following Suinno's continued failure to pay, Microsoft applied for a decision by default pursuant to Rules 355 and 158.5.
The Central Division initially rejected Microsoft's request, finding its pleadings were insufficient to enable the Court to properly assess the validity of the patent and absence of infringement. The Court of Appeal allowed Microsoft's appeal, setting out the following points:
- Rule 355.1 permits a decision by default where a party fails to take required steps within a specified time, or fails to appear at oral hearings. Whilst the court must consider the balance of interests between the parties, a decision by default may be granted without examining the substantive merits.
- Rule 355.2 only applies when a decision by default is sought against a defendant, and not when requested by a defendant against a claimant. This is because a decision by default against a defendant requires the court to find that the remedy sought is justified by the facts put forward by the claimant, but a decision by default against a claimant only requires a finding that the conditions in Rule 355.1 are met and a consideration of the balance of interests of the parties.
- Security for costs orders are effective due to the court's ability to grant decisions by default when parties fail to comply with the orders. Departures from this principle are only permitted in exceptional circumstances, and the concept of preserving the "status quo of the action" alone cannot justify such a deviation.
- Rule 356 reflects principles of fairness and equity, allowing a party against whom a decision by default has been given to apply to set aside that decision within one month of service.
The Court of Appeal revoked the Central Division's order, issued a decision by default against Suinno, dismissed Suinno's infringement action, and ordered Suinno to pay the costs of both first instance and appeal proceedings.
Paris Local Division finds parties' representatives billing hours and fees amount to confidential information - Microsoft Corporation v Suinno Mobile & Ai Technologies Licensing Oy - UPC_CFI_724_2025
This decision confirms that the parties' representatives' billing information – namely the number of hours spent on a case and the agreed fees – is confidential information. The court held that disclosure of such information would provide "insight into the client's financial standing and commercial strategy, the perceived value of the patent as a corporate asset, and the resources committed to fighting particular infringements".
Protecting this information allowed Suinno to conduct its business in a "fair competitive environment" and outweighed Microsoft's interests to have full access to the information, particularly in circumstances where a confidentiality ring had been agreed to give Microsoft's representatives and its managing director and main shareholder access to the information. The court also held there was unlikely to be any public interest in such information.
Security for costs - Court of Appeal confirms Non-EU/EEA parties as relevant factor – Chint New Energy Technology Co., Ltd & ors v JingAo Solar Co., Ltd - UPC_CoA_431/2025
This decision provides useful guidance on evidencing enforcement difficulties in non-EU/EEA jurisdictions and demonstrates the UPC's willingness to consider its own procedural experiences when assessing security for costs applications. JingAo had brought infringement proceedings against Chint before the Hamburg Local Division in 2024. Chint applied for security for costs, but the court dismissed the application on the basis that there was insufficient evidence to show that enforcing a costs order in China would be "impossible or unduly burdensome". The court also noted that the UPC had no experience with enforcing costs decisions in China.
Chint appealed, arguing that the court had failed to consider the UPC's own negative experiences with document service by Chinese authorities. The Court of Appeal found that the Local Division had exceeded its boundaries of discretion in its decision, and established several important principles regarding security for costs applications against parties domiciled in non-EU/EEA states:
- The absence of experience with enforcing UPC costs decisions in a particular country does not preclude a finding that enforcement may be impossible or unduly burdensome - the court must examine the likelihood that enforcement will be successful based on other available facts and circumstances.
- A party's registered office being located outside the EU/EEA is a relevant factor to consider, as whilst EU law guarantees recognition and enforcement of judgments between Member States, similar guarantees may not exist for non-EU/EEA states.
- It was not disputed that the UPC had had its own difficulties with serving documents in China under the Hague Service Convention. The Court of Appeal also noted that national courts of EU Member States had had comparable difficulties. These experiences supported Chint's submissions, particularly given the absence of evidence regarding actual enforcement of UPC costs decisions in China.
- The fact that Chint was also established in China did not change the court's assessment.
- Whilst JingAo relied on a list of cases concerning the recognition of foreign judgments in China, this was insufficient to refute Chint's submissions, especially as this indicated that recognition had in fact been refused on a number of occasions.
The Court of Appeal revoked the Local Division's order and ordered JingAo to provide €200,000 in security payable within one month.
Swarco Futurit Verkehrssignalsysteme GmbH v. Strabag Infrastructure & Safety Solutions GmbH, Chainzone Technology (Foshan) Co., Ltd - UPC CoA 70/2025 and UPC CoA 001/2025
The Court of Appeal at the UPC has considered the interplay between Rule 262A (Protection of Confidential Information) and Rule 262 (Public Access to the Register) of the Rules of Procedure. It has confirmed that a request under Rule 262.2 – which concerns the accessibility of written pleadings and evidence to the public through publication in the register - does not automatically grant provisional protection against the counter-party disclosing the information. Only Rule 262A allows restrictions on access to and use of such materials by the parties, their representatives, and their staff.
In this case, during appeal proceedings, Strabag and Chainzone requested that certain technical information be designated as confidential. It was argued that the information contained internal know-how of the intervener, Chainzone, relating to the manufacture of LED optical systems.
However, both Strabag and Chainzone had already introduced the relevant information into the proceedings at first instance, when making an application under Rule 262.2, but without lodging an application under Rule 262A RoP or indicating that the information required confidential treatment.
As the information had already been made available to Swarco at first instance, a request for confidentiality under Rule 262A during the appeal stage was inadmissible. The relevant information had already lost its character as a trade secret, as it had been made available to Swarco without restriction.