UPC CFI, LD Paris, 23 May 2025: On added matter, preliminary objections, long-arm jurisdiction and claim interpretation
17-08-2025 Print this page
Dutch, French, German and Italian parts of European patent revoked as amended (Article 138(1) EPC, Article 65(2) UPCA);
infringement claims concerning Poland admissible but dismissed as unfounded.
Claim interpretation principles (Article 69 EPC) apply equally to the assessment of the infringement and the validity of a European patent. No added matter amended claims (Article 138(1)(c) EPC). The allegation of NUC that no less than eight features are inextricably linked is unfounded, as NUC has not demonstrated such a link, and the skilled person would understand that, in describing an embodiment, features may be used to illustrate its working that are not necessarily an essential part of the invention.
Territorial scope and preliminary objections. Defence that UPC lacks jurisdiction under Article 34 UPCA to rule concerning acts of infringement committed in Poland does not concern matters of jurisdiction or competence falling within the scope of R. 19 RoP. It follows that the defendants objection based on Article 34 UPCA is admissible.
A distinction must be made between, on the one hand, the jurisdiction of the UPC (Articles 31, 32 and 33 UPCA), and, on the other hand, the territorial scope of the UPC’s decisions, as defined in Article 34 UPCA related to "Territorial scope of decisions". In other words, Article 34 UPCA “relates to the scope of the effect of the decisions” The territorial scope of a UPC decision does not concern matters of jurisdiction or competence falling within the scope of application of R. 19 RoP. It follows that the Defendants' objection based on Article 34 UPCA is admissible.
Long-arm jurisdiction concerning Poland: HUROM's claim concerning alleged acts of infringement on Polish territory is admissible in light of the decision handed down by the CJEU in BSH v Electrolux, as has already been stated by several divisions of the UPC concerning non-contracting States of the UPC Agreement. However, on the merits, the Claimant bears the burden of proof for the alleged facts in accordance with R. 13m and R. 171.1RoP. [...]. Consequently, HUROM's claim for infringement based on the national part of the patent as granted for Poland cannot be considered as well-founded.
