Key takeaways
Infringement actions and revocation counterclaims are separate actions under Art. 32(1) UPCA, making a conditional counterclaim an “inter-procedural” condition that determines whether a separate appeal or a cross-appeal must be lodged
Since the infringement action and the counterclaim for revocation are adjudicated in separate proceedings, a condition linking the counterclaim to the outcome of the infringement action qualifies as inter-procedural rather than intra-procedural. As a result, the defendant cannot rely on a cross-appeal under Rule 237 RoP to pursue the counterclaim, but must instead lodge a separate appeal against the first-instance decision.
Conditional counterclaims for revocation are permissible under the UPCA and remain pending even if the condition is unfulfilled, with Rule 263.3 RoP applying by analogy to limit the circumstances under which a decision on the merits of the counterclaim is required
Nothing in the UPCA or Rules of Procedure excludes conditional counterclaims per se. Under the principle of party autonomy, parties are free to define the subject-matter of their case and limit their claims conditionally. Making a counterclaim conditional does not alter the claims themselves but merely restricts the circumstances under which the Court must decide on their merits, and is therefore not a withdrawal. Rule 263.3 RoP applies by analogy, and the counterclaim remains pending during the appeal period.
Under Articles 2 and 6 UPCA, ‘the Court’ encompasses both the Court of First Instance and the Court of Appeal, meaning a conditional counterclaim remains pending during the appeal period
Unless explicitly restricted to the first instance, a condition referring to “the Court” means a final finding of infringement. Thus, if the claimant appeals a non-infringement finding, the defendant’s conditional counterclaim remains pending and can be appealed.
Under Rule 242.2(b) RoP, “failed to decide” covers any issue left undecided at first instance, allowing the Court of Appeal to decide the counterclaim directly
If the Court of Appeal finds infringement, it will decide the undecided validity issues itself rather than referring the case back. Undecided issues due to an unfulfilled condition are treated as issues the first-instance court “failed to decide.”
Division
Court of Appeal
UPC number
UPC-CoA-40/2026, UPC-CoA-123/2026
Type of proceedings
Request for review (Rule 333 RoP) and application for re-establishment of rights (Rule 320 RoP) in parallel infringement and counterclaim for revocation proceedings
Parties
Counter-claimant / Defendant at first instance: AorticLab, srl
Counter-defendant / Claimant at first instance: Emboline Inc.
Patent
EP 2 129 425
Body of legislation / Rules
R. 220.1(a) RoP, R. 237 RoP, R. 242.2(b) RoP, R. 263.3 RoP, Art. 2 UPCA, Art. 6 UPCA, Art. 32(1) UPCA, Art. 75(1) UPCA
