Key takeaways
Pursuant to Art. 75(1) UPCA, where the CoA sets aside a decision of the CFI, it shall, as a rule, give a final decision itself
The CoA, after considering the appeal of the Claimant (and revocation defendant) against the judgment of the CFI in the counterclaim for revocation to be well-founded, must, in order to issue a final decision, as a rule decide not only on the counterclaim for revocation but also render a final decision on the infringement action. A referral back to the CFI is contemplated only in exceptional cases, Art. 75(2) UPCA
The fact that the CFI did not (have to) rule on the infringement does not, as a rule, give the CoA grounds to refer the counterclaim for revocation and the infringement action, or even only the infringement action, back to the CFI
R. 242.2(b) RoP provides that the fact that the CFI failed to decide an issue which it is necessary for the CoA to decide on appeal does not normally constitute an exceptional circumstance justifying a referral back. Thus, the fact that the CFI did not have to rule on the infringement of the patent at issue because, in the context of a counterclaim for revocation brought by the Defendant, it considered the patent underlying the infringement action to be invalid and therefore revoked it does not constitute grounds to refer back either the counterclaim for revocation or the infringement action.
Art. 80 UPCA requires the finding of a legitimate interest of the claimant in the requested publication of the decision at the defendant’s expense
All circumstances of the individual case must be considered, such as the scope and severity of the infringement, the public presentation of the conflict, the public’s interest in information, and whether the publication of the decision can contribute to eliminating misconceptions in the market caused by the infringement or to deterring future infringements.
Prerequisite for a decision on whether the subject-matter of a dependent patent claim is not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, Art. 138 (1)(b) EPC
A decision on whether the subject-matter of dependant patent claims is not disclosed in a manner sufficiently clear and complete for it to be
carried out by a person skilled in the art (Art. 138(1)(b) EPC) is not required for lack of legal interest, if the counterclaim for revocation is already unsuccessful with respect to an independent claim, to which the dependent claims directly and indirectly refer back and which therefore has a scope of protection that also encompasses the dependent claims.
Division
Court of Appeal of the Unified Patent Court
UPC number
UPC_CoA_302/2025, UPC_CoA_305/2025
Type of proceedings
Counterclaim for revocation and infringement proceedings
Parties
Appellant (Claimant in infringement proceedings): Rematec GmbH & Co KG
Respondent (Defendant in infringement proceedings): Europe Forestry B.V.
Patent(s)
EP 2 548 648
Jurisdictions
CFI: LD Mannheim
CoA: Panel 1a
Body of legislation / Rules
Art. 75 UPCA; R. 242 RoP; Art. 80 UPCA; Art. 64(4) UPCA
