Court of Appeal, October 3, 2025, Decision Regarding Infringement and Counterclaim for Revocation, UPC_CoA_534/2024, UPC_CoA_19/2025, UPC_CoA_683/2024

The term “offering” within the meaning of Art. 25 a) UPCA is to be interpreted autonomously. Offering is to be understood in the economic sense and is not to be based on the legal understanding in the sense of a binding contractual offer. The offer therefore need not contain all the details that would be necessary for the immediate conclusion of a contract by merely accepting the offer. It is sufficient to present an object in such a way that viewers can make an offer to transfer it, e.g. to conclude a purchase, rental or lease agreement. The “invitatio ad offerendum” is therefore already covered. It is therefore not necessary to state a price.

A readiness to deliver or the possibility of delivery is not relevant for the concept of offering.

An “infringer” within the meaning of Art. 63 UPCA in conjunction with Art. 25 UPCA is also a person who does not himself perform the acts referred to in Art. 25 UPCA, but to whom the acts of the third party are attributable because he is an instigator, accomplice or accessory. Who is an instigator, accomplice or accessory in this sense is determined on the basis of an autonomous interpretation of Art. 63 UPCA and Art. 25 UPCA.

The mere position as managing director does not make the managing director an accomplice or facilitator (Beihilfe) to a patent infringement of the company. Liability of the managing director can only be considered if the objectionable act of the managing director goes beyond the typical professional duties of a managing director. This applies in particular in the event that he uses the company for the purpose of committing patent infringements. However, this is also the case if the managing director knows that the company is committing a patent infringement and – although it is possible and reasonable for him to do so – does not take action to stop the patent infringement.

Knowledge of the patent infringement does not only require the managing director to be aware of the circumstances from which a patent infringement arises. Rather, awareness of the unlawfulness of the act of use is also required – as is the case with any facilitator. If the managing director obtains legal advice on the question of patent infringement, he can generally rely on this until a first-instance decision establishing the patent infringement of his company is available.

The ordering of the remedial measures of recall, removal from the distribution channels and destruction pursuant to Art. 64 (2) (b), (d) and (e) UPCA is the normal case. The infringer has the burden of presentation and proof for the lack of proportionality.

The claimant’s requests for an order to recall the products from the channels of commerce, the permanent removal of the products from the channels of commerce and the destruction of the products and/or the materials and equipment concerned must generally contain the time limit for providing information (running from the notification pursuant to R. 118.8 sentence 1 RoP or, in proceedings concerning the ordering of interim measures, from the service of such an order). The deadline must therefore already be set in the decision or in the final order. If no time limit is set in the final order or decision, it is up to the plaintiff to set the defendant a time limit for the aforementioned remedial measures with the notification of the intention to enforce in accordance with R. 118.8 RoP.