Court of Appeal – Clarification on a conditional counterclaim for revocation – UPC-CoA-40/2026, 16 July 2026, Emboline, Inc. v. AorticLab, srl

1. Limiting a counterclaim for revocation by making it conditional upon a finding of infringement is permissible.
2. There is a need for clarification on such a conditional counterclaim if and when the infringement claimant appeals from a finding of non-infringement by the Court of First Instance.
3. In the event of an appeal by the infringement claimant, the counterclaimant may appeal against the Court of First Instance’s decision not to decide on the counterclaim for revocation. Even though upon a finding of non-infringement a decision not to decide on the counterclaim is in accordance with the counterclaimant’s request, the (conditional) counterclaimant must nevertheless be considered to have a legitimate interest in an appeal since, if the Court of Appeal were to overturn the Court of First Instance’s decision and finds an infringement, the condition would be fulfilled and the decision of the Court of First Instance holding that the condition was not fulfilled must be set aside.
4. The counterclaimant may lodge an appeal pursuant to R. 220.1(a) RoP under the condition that the infringement claimant lodges an appeal against the decision in the infringement action. Once an appeal in the infringement action is lodged, the applicable (regular) appeal fee must be paid. If no appeal against the decision in the infringement action is lodged, the condition under which the appeal in the counterclaim for revocation action was lodged is not fulfilled, the appeal is considered to be not lodged and no appeal fees shall be due.
5. On appeal, the counterclaim for revocation remains conditional, unless the counterclaimant would request to remove the condition and pursue its claim unconditionally. Such a request will then be subject to leave to change claim pursuant to R. 263 RoP by analogy, and R. 222.2 RoP.
6. If the condition to which the counterclaim for revocation action is subjected is fulfilled due to a finding of infringement by the Court of Appeal, the Court of Appeal shall as a rule not refer the counterclaim back to the Court of First Instance, but shall decide on it, in accordance with Art. 75(1) UPCA and R. 242.2(b) RoP, last sentence.

Neither the UPCA nor the Rules of Procedure expressly address conditional counterclaims for revocation. The Court applies R. 263.3 RoP by analogy, finding that the balance of interests corresponds to the situation at hand. An unconditional request by the counterclaimant to make its claim conditional upon a finding of infringement shall be granted.

Since neither the UPCA nor the RoP expressly address this scenario, the Court of Appeal identified a procedural gap and issued this clarification to guide future cases. As the procedural path was previously unclear, the counterclaimant in the present case may seek re-establishment of rights under R. 320 RoP.

If the Court of Appeal overturns the non-infringement finding and finds infringement, the condition becomes fulfilled and the first instance decision holding that the condition was not met must be set aside. This gives the counterclaimant a genuine and legally recognizable stake in the appellate proceedings.

Once the infringement claimant’s appeal is lodged, the regular appeal fee becomes due. If no such appeal is filed within the deadline under R. 224 RoP, the counterclaimant’s conditional appeal is deemed not to have been lodged and no fees are owed.

Removing the condition requires the Court’s leave under R. 263 RoP by analogy and R. 222.2 RoP. This safeguards the opposing party’s procedural rights and prevents the counterclaimant from unilaterally expanding the scope of the appeal without judicial oversight.

Referral back to the Court of First Instance is the exception, not the rule. Art. 75(1) UPCA and R. 242.2(b) RoP, last sentence, vest the Court of Appeal with authority to dispose of matters definitively. This approach prioritizes procedural efficiency and avoids unnecessary additional rounds of proceedings.