Key takeaways
The UPC’s “inherent” jurisdiction to ensure its effectiveness: The jurisdiction extends to the abusive use of divisional applications. In revocation proceedings or actions for declaration of non-infringement, the court may decline to dispose of the action (Rule 360 RoP) and determine that a patent lacked inventive step, notwithstanding its withdrawal by the patentee
The list in Art. 32(1) UPCA remains the starting point and defines the Court’s competence. However, the UPC’s jurisdiction needs to ensure the effectiveness of the judicial protection entrusted to it. Its jurisdiction thus extends to conduct designed to circumvent its exercise, including the abusive use of divisional applications. In revocation proceedings or actions for a declaration of non-infringement, that jurisdiction may be exercised, in particular, by declining to dispose of the action under Rule 360 RoP and by determining that a patent lack(ed) inventive step, notwithstanding its withdrawal at the proprietor’s initiative. (cf. headnote 2, para. 12)
Request 5 seeking an abstract declaration on the obviousness of a subject-matter is not allowable (“the Court declares that at the priority date of the patent in suit a composition comprising semaglutide for use in …. was obvious to the skilled person in the art having regard to the common general knowledge and/or the prior art relied upon in the present proceedings“)
The UPC has no jurisdiction to entertain a claim seeking a declaration that a composition, independently of a specific patent right, was obvious at a given priority date. (cf. headnote 1, para. 16)
Request 6 seeking a declaration regarding divisional patents is within the UPC’s jurisdiction and competence (“the Court declares any claim of a Unitary Patent or respective European Patent granted for the Contracting Member States, entitled to claim the priority date of any application within the patent family of EP 3 689 365 broad enough to cover the subject matter of claims 1 to 5 of the patent in suit, would be invalid on the grounds of lack of inventive step“)
Request 6 seeks Arrow-type relief (or declaration) and asks the Court to determine a defined issue of obviousness now, in order to provide commercial certainty against later enforcement of materially equivalent claims pursued through pending or future divisionals. (para. 21)
The court has competence to rule on (in)validity of claims of Unitary and European Patents (the latter where they are not opted out). If Request 6 relating to claims of multiple European and Unitary Patents is as such admissible, is not a question of competence of the Central Division (section Milan) but of the admissibility of the requests, which
must be dealt with in the main proceedings. (para. 24)
The Central Division has jurisdiction to grant provisional and protective measures in matters entrusted by the UPCA which includes the power, where necessary, to preserve the effectiveness of pending revocation proceedings, to restrain a party from withdrawing its approval of the text of the patent under Art. 113(2) EPC
Content 1
Division
Central Division Milan
UPC number
UPC_CFI_2221/2026
Type of proceedings
Central revocation proceedings / preliminary objection under R. 19 RoP
Parties
Claimant: Sandoz AG
Defendant: Novo Nordisk A/S
Patent(s)
EP 3 689 365
Body of legislation / Rules
Rule 19 RoP, Art. 32(1) UPCA
