JUVE Patent
Legal news ticker in cooperation with GRUR
Legal news ticker in cooperation with GRUR
JUVE Patent and GRUR Patent bring you the latest news and developments concerning European and UPC patent law.
September 2025
UPC Digest, Issue no. 5: Inventive step
Not only in the field of claim construction, but also in individual substantive issues of patent validity, the case law of the UPC seems to be sufficiently developed to provide an initial interim result. This applies in particular to the question of inventive step, which has been the subject of comparative law interest for some time (even before the UPC intervened). In the meantime, it is becoming apparent where the journey is heading: the Court is attempting to adopt familiar patterns of argumentation (from national courts and the European Patent Office) without, however, taking one of the sides in an abbreviated and catchphrase-like manner. In this sense, the aim should be to present the criteria of inventive step as “stand alone” (as UPC law). That this attempt is successful to a large degree already today, however, does not mean that the practitioner has to break new ground in the argumentation of the individual case. Much remains the same, or at least familiar.
(Volkmar Henke and Martin Drews, GRUR Patent 2025, page 378)
UPC Munich local division opts for the task-solving approach but fails to apply it consistently
The local division expresses, on the one hand, support for adopting the EPO's practice, in particular the problem-solution approach (PSA). On the other hand, however, it fails to apply its own stated position, instead conflating elements of the PSA with the German examination approach. The local division fails to recognize that the EPO's practice is based on a fundamentally different legal test, one that is incompatible with ist own reasoning and at times leads to different outcomes in the assessment of obviousness. These differences are therefore addressed here, particularly with respect to the relevance of unclaimed technical effects associated with the patent-in-suit's teaching. Against this background, the decision appears primarily as a political statement rather than the result of a doctrinally grounded analysis and evaluation of the respective legal tests.
(Rainer Engels and Markus Ackermann, GRUR Patent 2025, page 406)
With regard to the (new) proposals of the EU regulations concerning supplementary protection certificates, a compromise suggestion is proposed which, while retaining the competence of the EUIPO, introduces a clear separation of work between the UPC and the EUIPO. Furthermore, the opposition should be “post grant”.
(Aloys Hüttermann, GRUR Patent 2025, page 397)
UPC Court of Appeal Case Law Review, Issue no. 3: Transparency or confidentiality?
The interplay between transparency and confidentiality has quickly become a central issue in the case law of the Unified Patent Court. Although the Agreement on a Unified Patent Court and its Rules of Procedure provide for public access to court proceedings and documents, the practical application of these principles – particularly under Rule 262.1(b) RoP – has required judicial clarification. The Court of Appeal has now developed a consistent framework, beginning with the Ocado vs Autostore decision, which confirms that access to written pleadings and evidence depends on a case-by-case assessment of competing interests. During ongoing proceedings, protecting the integrity of the process often takes priority, while access is generally granted once proceedings are concluded, unless confidentiality or data protection concerns justify restrictions. Recent decisions have also clarified key procedural aspects related to access requests, such as the content of a corresponding application, the requirement of legal representation, and the limited relevance of cost reimbursement. Together, these rulings establish a more predictable approach to public access in UPC litigation, moving beyond the initial divergence in how divisions of the Court of First Instance interpreted the rules.
(Felix Banholzer, GRUR Patent 2025, page 391)
The Editors’ Choice – EPO (Technical Board of Appeal 3.2.06), 2025
This is one of the first cases where the use of AI was an issue with regard to claim interpretation. In decision T 1193/23, the EPO Board of Appeal set aside the opposition division's decision to maintain the patent in amended form and revoked the patent. The Board deemed ChatGPT outputs to be irrelevant for claim interpretation because large language models use unknown, undated training data.
(Karel Peirs, GRUR Patent 2025, page 426)
Rarely has there been such a major upheaval in European civil law as is currently the case in patent law. At the forefront of this legal revolution is the implementation and adoption of the Unified Patent system over the past two years, including patent litigation under a completely new set of procedural rules before the Unified Patent Court. As a further not yet implemented component of this transformation, Art. 35 UPCA provides for the establishment of a Patent Mediation and Arbitration Centre (“PMAC”). This center is intended to become fully operational at the beginning of 2026, and public consultations regarding its mediation and arbitration rules have recently begun. Against this background, the authors aim to provide readers with an overview of the past and present state of alternative dispute resolution (“ADR”), specifically arbitration, in this first article of a three-part series. The subsequent parts will discuss the advantages and challenges of ADR in the specific context of patent disputes as well as the PMAC's potential impact. Throughout this series, reference will be made to the draft rules for the PMAC, published in May and June 2025.
(Christoph Gramlich-Altenburg, Jonathan Hechler and David Wanner, GRUR Patent 2025, page 385)
The Editors' Choice – UPC (Paris CD), November 5, 2024
The decision rendered by the Paris Central Division on November 5, 2024 in the revocation proceedings between NJOY Netherlands and Juul Labs International regarding European patent EP 3 504 991 B1 (UPC CFI 315/2024) was one of the first rulings of the Unified Patent Court on the patentability requirement of inventive step. The present article compares the approach taken by the Paris Central Division to inventive step with the practice of the European Patent Office, German law, and the case law of the UK courts. The considerations of the Paris Central Division reveal a preference for the German approach when assessing inventive step. In the opinion of the authors the Unified Patent Court should strive for a concept of inventive step which is coordinated with both, the case law of the domestic courts and the practice of the European Patent Office.
(Rachel Bateman and Simon Klopschinski, GRUR Patent 2025, page 411)
The Editors’ Choice – UPC (LD Düsseldorf) – Sanofi/Amgen
The decision addressed in the following is the first decision of the UPC on the infringement and validity of second medical use patents. In this decision, the Local Division Düsseldorf establishes for the first time the applicable standard for infringement of such patents. It also contains considerations on the relevance of information in the Summary of Product Characteristics beyond the specific indication, in particular in section 5.1 (“pharmacodynamic properties”).
(Nina Bayerl, GRUR Patent 2025, page 360)
Patent nullity in the UPC system - third-party counterclaim in infringement proceedings?
A revocation action must be brought against the patent proprietor(s). If a licensee with standing to sue or only one of several patent proprietors brings an infringement action before the EPG local or regional division, it is questionable whether the defendant can defend itself in the same proceedings with a revocation counterclaim, even though the patent proprietor(s) or all of them have not yet been involved in the proceedings. If this is denied, the defendant in the infringement proceedings would only have an independent revocation action at its disposal. The following article deals with this issue.
(Michael Nieder, GRUR Patent 2025, page 354)
Compensation for damages after revoked preliminary injunction due to void pharmaceutical patent
The case directs a spotlight towards the German part of a patent dispute staged on markets in several European jurisdictions and the USA. Point of departure of the litigation was the unsuccessful attempt to extend an expired European blockbuster pharmaceutical patent de facto by related follow-up patents that were initially granted but declared invalid later on. A preliminary order to cease and desist the commercial exploitation of a competing drug was quashed. The competitor filed a claim against the failed patent holder and applied for compensation of his lost profits as well as surrender of the infringer’s profit overshooting the compensation that was generated during the prohibited access to the market. During the period of interdiction, the plaintiff leased the business to an affiliated company, therefore inducing additional legal problems. Parallel proceedings of the European Commission investigated the abuse of market power according to Art. 102 TFEU by the application for the follow-up patents. The Commission imposed a harsh penalty. Highly sophisticated pleadings of the parties led to interesting answers on several unsolved questions of law. The analysis of the varying reasons for the decisions given by all three instances discusses alternative claims for compensation the judgment didn’t deal with.
(Hans-Jürgen Ahrens, GRUR Patent 2025, page 346)
„PI damages“: Revocation of provisional measures and compensation of the Defendant under R. 213.2 RoP
The tide can turn in any patent case for various reasons – e. g. if a patent is revoked at some point. Yet, what can be done to compensate for damages incurred by a party because of provisional measures being granted on the basis of said patent? The economic consequences of such a measure can be severe and hence, a compensation mechanism is necessary to strike a fair balance between the interests of right holders and other parties as emphasized in the UPCA considerations. While the RoP indeed provide for a compensation in R. 213.2. RoP, once again, the specific assertion raises many questions, some of which are presented here.
(Oliver Jan Jüngst and Moritz Schroeder, GRUR Patent 2025, page 340)
Good things come to those who wait – After decades of diverging case law the EPO sets clear rules in G 1/24
After the entry into force of the European Patent Convention (EPC) in 1973, a large number of different Technical Boards of Appeal (BoA) at the EPO generated a series of diverging case law when it came to the question whether the description and drawings of a patent must be considered for assessing the subject matter for which a patent holder seeks protection through its patent claims. Some BoA’s expressed the opinion that the description of a patent is more like a secondary resource which should only be consulted in special cases in which the patent claims seem unclear or ambiguous. Others turned down a different path and expressed the opinion that the description must always be consulted when interpreting claims. With its landmark decision G 1/24 (GRUR-RS 2025, 13433 – Heated Aerosol Generating Article) published on June 18, 2025, more than 50 years after the start of the European Patent Convention, the Enlarged Board of Appeal finally got the chance to ensure a uniform application of the EPC and decided that the description and drawings are always referred to when interpreting the claims, and not just in the case of unclarity or ambiguity.
(Felix Hütt, GRUR Patent 2025, page 336)
Practical implications of BSH v Electrolux for resolving global patent disputes
Until recently, the following practical rule applied (with a few exceptional cases in the Netherlands in interim proceedings): 39 EPC Member States – theoretic need for 39 infringement actions. This rule changed when the UPC opened its doors on 1 June 2023 offering a one-stop-shop for patent disputes in the EU, centralizing infringement and revocation proceedings for meanwhile 18 Contracting Member States. And it changed again in spring 2025 with the ruling of the CJEU in BSH v Electrolux offering a one-stop-shop litigation solution also for the remaining nine EU Member States, the remaining 12 non-EU members of the EPC, and in fact any third state when dealing with EU-domiciled defendants. This article analyses practical implications of the ruling on the level of national courts as well as on the UPC level from a claimant’s and a defendant’s perspective. Some open questions are addressed and a short outlook is provided.
(Tilman Müller-Stoy and Paul Lepschy, GRUR Patent 2025, page 331)
First instance proceedings in UPC appeal proceedings
Unlike German civil proceedings, proceedings before the UPC Court of Appeal are not bound by the facts established in the first instance. The submissions of the first instance are not part of the subject matter of the proceedings before the UPC Court of Appeal, as described in Rule 222 (1) of the Rules of Procedure. This article intends to clarify for the appeal instance how the parties are to deal with facts, evidence and arguments submitted in the first instance.
(Michael Nieder, GRUR Patent 2025, page 314)
The IFA's patent examination obligations when listing medicines in the Lauer Taxe
IFA is the central information service provider for the pharmaceutical sector and operates the IFA database, on which the so-called Lauer tax is based, which provides information on the orderability of a drug. In a recent decision (GRUR-RR 2024, 269), the Munich I Regional Court affirmed a patent obligation and liability of IFA if patent-infringing generics are listed in the Lauer tax. However, the establishment of a comprehensive audit obligation would overload the IFA in its current form, according to the author. In weighing up the conflicting interests, IFA's duty to examine can only be assumed in exceptional cases if the possibility of a direct patent infringement is immediately obvious to IFA by means of a substantiated notice and the validity of the asserted patent has also been confirmed in adversarial proceedings.
(Marco Stief, GRUR Patent 2025, page 308)
The article critically examines the two-year practice of the Unified Patent Court (UPC) and identifies a number of legal issues, in addition to terminology, as worthy of discussion. Overall, the UPC's performance since its inception has been commendable – but there is always room for improvement.
(Winfried Tilmann, GRUR Patent 2025, page 271)
The cost regime implications of UPC CoA order in Syngenta vs Sumi Agro
In the Court of Appeal’s order UPC CoA 523/2024, the Court ruled for the first time that a decision on costs may follow on the conclusion of preliminary injunction proceedings even if there still exists a pending action on the merits. The implications of this order are examined in this article.
(Filip De Corte and Aloys Hüttermann, GRUR Patent 2025, page 317)
It is time to celebrate the second anniversary of the Unified Patent Court (“UPC”), which began its work on June 1, 2023, and has since received almost 900 cases. After two years, around 1,100 decisions and orders of the Court of First Instance and the Court of Appeal have already been published, clearly demonstrating that the Court has successfully established itself as a new forum in the European patent system. Numerous procedural orders continue to be issued, strengthening case law on procedural issues, as well as an increasing number of orders and decisions addressing the question of comprehensive international jurisdiction beyond the UPC Member States. At the same time, an increasingly complete case law on material patent law emerges. It therefore continues to be useful to provide an overview in order to facilitate access to the Court's guidelines on the UPC Agreement (“UPCA”) and the Rules of Procedure (“RoP”).
(Klaus Haft/Sabine Agé/Giulia-Isabella Otten/Natali Goginashvili/Alix Fourmaux, GRUR Patent 2025, page 281)
Spotlight on: The language of proceedings before the Unified Patent Court – Part 2
Continuing from the first part of this two-part essay (GRUR Patent 2025, 241), this second part highlights the options for changing the language of proceedings before the Unified Patent Court. The main focus is on language change requests by only one party of the proceedings, which have already been the subject of numerous orders. Drawing on established legal precedents, in particular the orders of the Court of Appeal, the likelihood of success for such requests can now be assessed with considerable accuracy.
(Holger Hiss and Julian Fischer, GRUR Patent 2025, page 298)
In this, the fourth edition of our UPC Digest, we turn to a core topic in every patent dispute – defining the extent of protection conferred by a patent on its claimed teaching. Patent interpretation is involved in virtually every patent dispute, and for practitioners it is sometimes the crux around which proceedings revolve. It requires thorough formulation of good arguments – in most cases without any exemplary models. It should therefore come as no surprise that the first decisions on the merits handed down by the Unified Patent Court relate primarily to patent interpretation issues. Our discussion below provides an overview of the initial case law of the Unified Patent Court. As it turns out, many of the principles elaborated so far are neither unexpected nor unknown. The Court of Appeal set a clear direction in this respect at an early stage.
(Martin Drews and Volkmar Henke, GRUR Patent 2025, page 226)
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