SONN Patentanwälte – IP Attorneys

1. Evidence, Procedural law, Revocation, Unified Patent Court, UPCA, Late-filed submissions

   In this decision, the Vienna Local Chamber emphasizes the extensive duties of parties to submit evidence and arguments in a timely manner in proceedings before the Unified Patent Court. The Rules of Procedure require that a counterclaim for revocation contains an explanation of the facts relied upon,...

2. UPC: Munich Local Chamber on Claim Amendments and Conditional Counterclaims for Revocation

   In this decision, the Munich Local Chamber addresses highly practical questions regarding the adaptation of infringement allegations and the admissibility of conditional counterclaims for revocation. The Court clarified that it does not constitute an amendment of a claim within the meaning of Rule...

3. UPC: Milan Central Division on Revocation Action Becoming Devoid of Purpose After EPO Revocation

   In these proceedings, the Milan Central Division addresses the consequences of a complete revocation of the patent in suit by the European Patent Office on a parallel revocation action pending before the Unified Patent Court. Since the patent was finally and fully revoked (ex tunc) by the Opposition...

4. UPC: Obligation of the Court of Appeal to Render a Final Decision Instead of Remand

   The Court of Appeal clarifies its obligation to issue a final decision on the merits when setting aside a first-instance judgment. As a rule, the Court of Appeal is required to render a final decision if it sets aside the decision of the Court of First Instance. This means that, after having found...

5. UPC-Court of Appeal: Procedural decision on the extension of the time limit for filing the statement of defence on appeal

   The Hamburg Local Division dismissed an infringement action and the counterclaim for revocation. The plaintiff appealed and requested protection of confidential information pursuant to R 262A and R 262.2 VerfO. The Court of Appeal ruled on these motions on July 17, 2025, and granted the defendant...

6. UPC Local Division: Partial Revocation

   If the grounds for revocation only affect part of the patent in suit, the patent is limited by the corresponding amendment of the claims and partially revoked. Even in revocation proceedings before the Unified Patent Court, a patent can only be revoked to the extent that the grounds for revocation...